Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`----------------------------------)
`NOVEN PHARMACEUTICALS )
`INC. AND MYLAN PHARMACEUTICALS, )
`INC., )
` )
` Petitioner, )
` )
` vs. ) Review No. 2014-00549
` ) and IPR 2015-
`NOVARTIS AG AND LTS )
`LOHMANN THERAPIE-SYSTEME AG, )
` )
` Patent Owners. )
`----------------------------------)
`
` VIDEOTAPED DEPOSITION OF
` CHRISTIAN SCHÖNEICH, Ph.D.
` New York, New York
` April 18, 2015
`
`Reported by: BONNIE PRUSZYNSKI, RMR, RPR, CLR
`JOB NO. 92484
`
`TSG Reporting - Worldwide 877-702-9580
`
`1 2
`
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`1 of 121
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`----------------------------------)
`NOVEN PHARMACEUTICALS )
`INC. AND MYLAN PHARMACEUTICALS, )
`INC., )
` )
` Petitioner, )
` )
` vs. ) Review No. 2014-00549
` ) and IPR 2015-
`NOVARTIS AG AND LTS )
`LOHMANN THERAPIE-SYSTEME AG, )
` )
` Patent Owners. )
`----------------------------------)
`
` VIDEOTAPED DEPOSITION OF
` CHRISTIAN SCHÖNEICH, Ph.D.
` New York, New York
` April 18, 2015
`
`Reported by: BONNIE PRUSZYNSKI, RMR, RPR, CLR
`JOB NO. 92484
`
`TSG Reporting - Worldwide 877-702-9580
`
`1 2
`
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`1 of 121
`
`
`
`Page 2
`
` April 18, 2015
` 9:47 A.M.
`
` DEPOSITION OF CHRISTIAN SCHÖNEICH,
`Ph.D., held at the offices of Kenyon & Kenyon, One
`Broadway, New York, New York, before Bonnie Pruszynski,
`a Registered Professional Reporter, Registered Merit
`Reporter, Certified LiveNote Reporter, and Notary
`Public of the State of New York.
`
`TSG Reporting - Worldwide 877-702-9580
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`2 of 121
`
`
`
`Page 3
`
`A P P E A R A N C E S:
`
`KENYON & KENYON
`Attorneys for Petitioner Noven Pharmaceuticals
` One Broadway
` New York, New York 10004
`BY: MICHAEL GLYNN, Ph.D., Esq.
` MICHAEL LEVY, ESQ.
` KULSOOM HASAN, ESQ.
`
`KNOBBE MARTENS OLSON & BEAR
`Attorneys for Petitioner Mylan Pharmaceuticals
` 12790 El Camino Real
` San Diego, California 92130
`BY: BENJAMIN ANGER, ESQ.
`
`FITZPATRICK CELLA HARPER & SCINTO
`Attorneys for Patent Owner
` 1290 Avenue of the Americas
` New York, New York 10104
`BY: CHARLOTTE JACOBSEN, ESQ.
` JARED STRINGHAM, ESQ.
`
`Also Present: Michael Pineiro, CLVS
`
`TSG Reporting - Worldwide 877-702-9580
`
`1 2
`
`3 4
`
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`3 of 121
`
`
`
`Page 4
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` THE VIDEOGRAPHER: This is the
` start of tape labeled number one of the
` videotape deposition of Christian
` Schöneich in the matter Noven
` Pharmaceuticals vs. Novartis AG and LTS
` Lohmann Therapie-Systeme.
` Today is April 18th, 2015. The
` time is approximately 9:47 a.m.
` Appearances have already been noted
` by the court reporter.
` Will the court reporter please
` swear in the witness.
` (Witness sworn.)
`CHRISTIAN SCHONEICH, Ph.D.,
` called as a witness, having been first
` duly sworn, was examined and testified
` as follows:
`EXAMINATION
`BY MS. JACOBSEN:
` Q Dr. Schöneich, I'm going to hand
` you copies of your declarations that have all
` previously been marked in the IPR
` proceedings. I'm using copies from the '031
` IPR, just so that we all know where the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`4 of 121
`
`
`
`Page 5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`documents are coming from.
` The first one has been marked
`Exhibit 1011, and the next one has been
`marked Exhibit 1032.
` And starting with Exhibit 1011, do
`you recognize this document?
` MR. GLYNN: Before we answer
` questions on 1011, you of course had the
` opportunity to cross-examine
` Dr. Schöneich on his opening declaration,
` and didn't do that, and instead used the
` trial testimony.
` So, this is not an opportunity to
` cross-examine him on that declaration.
` This is an opportunity to cross-examine
` him on his reply declaration. So, any
` questions that only go to the opening
` declaration are clearly objectionable and
` outside the scope.
` MS. JACOBSEN: We disagree, but we
` can cross that bridge when we come to it.
` Q So, Dr. Schöneich, starting with
`Exhibit 1011, do you recognize that document?
` A I do.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`5 of 121
`
`
`
`Page 6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Q And is that a copy of the first
`declaration that you submitted in these IPR
`proceedings?
` A As far as I see, yes, it is.
` Q Okay. And you submitted a, at
`least substantively equivalent declaration in
`the second IPR proceedings, which is the '549
`IPR relating to the '023 patent; is that
`right?
` MR. GLYNN: And that objection
` applies to that opening declaration as
` well.
` Q Is that right, Dr. Schöneich?
` A I believe I did.
` Q Okay. And is it fair to say that
`any opinions that you or answers that you
`give me today relating to the '031 IPR
`proceedings would apply equally in the '023
`IPR proceedings?
` A Yes, I think so.
` Q Okay. And then the second document
`that I gave you was Exhibit 1032. Do you
`have that?
` A Yes.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`6 of 121
`
`
`
`Page 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Q And do you recognize that document?
` A Yes, I do.
` Q Is it a copy of the reply
`declaration that you submitted in the '550
`IPR proceedings relating to the '031 patent?
` A Yes.
` Q And you submitted a substantively
`similar declaration in the '023 proceedings,
`or the '549 proceedings relating to the '023
`patent?
` A Yes.
` Q Okay. And any answers that you
`give me relating to Exhibit 1032 in the '550
`IPR proceedings would apply equally to the
`'549 proceedings relating to the '023 patent;
`is that right?
` A It's the '031. Did you say '032?
` Q I may have done --
` A Yeah, okay.
` Q Because it's an exhibit. So, shall
`I try the question again?
` A No, that's fine. If we agree on
`that, yeah.
` Q We agree that answers that you give
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`7 of 121
`
`
`
`Page 8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`today will apply in both IPR proceedings?
` A Yes.
` Q Great.
` Now, I know you have been deposed
`before, in the Noven trial proceedings.
`That's correct?
` A Yes.
` Q So, I will just quickly recap some
`of the rules, just so we are on the same
`page, okay?
` A Yes.
` Q The first one is, we are going to
`need audible answers from you.
` A Am I speaking too low? Okay.
` Q No. You just nodded --
` A Okay. Yes. Yes, sure.
` Q -- in answer to my question.
` A Yes.
` Q Okay. And I will finish my
`question, and then you should wait until I
`have finished before you start answering.
`That's okay?
` A Yes.
` Q And I will endeavor to wait until
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`8 of 121
`
`
`
`Page 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`you have finished answering before I ask the
`next question.
` A Yes.
` Q If you don't understand any of my
`questions, please ask me to clarify.
` A Yes.
` Q And if you don't ask me to clarify,
`I'm going to assume that you understood my
`question.
` A Yes.
` Q Okay. You should feel free to
`refer to your declarations to the extent that
`you need to. This isn't a memory test.
` A Yes.
` Q And when necessary, I will point
`you to the particular paragraph that I want
`to discuss, so you know exactly how to
`orientate yourself in the issue.
` A Okay. Thank you.
` Q Fine.
` That said, I want to start with
`some basic chemistry before we get into
`anything more complicated.
` The first question is: It's right
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`9 of 121
`
`
`
`Page 10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`that a hydrocarbon is a compound that
`consists entirely of hydrogen and carbon; is
`that right?
` A So, I think in the broadest sense,
`hydrocarbons probably frequently are
`considered also compounds which contain other
`atoms, but in the truest sense, if you are
`only talking about a hydrocarbon, yes, carbon
`and hydrogen.
` Q Okay. And rivastigmine is not
`comprised only of hydrogen and carbon;
`correct?
` A That is correct.
` Q Okay. It's a phenyl carbamate; is
`that right?
` A It has a carbamate substituent.
` Q It also has a phenyl?
` A It has a phenyl substituent at one
`particular carbon atom.
` Q So, is it fair to say it's a phenyl
`carbamate?
` A I believe that is okay.
` Q And rivastigmine would not be
`described as an alkene?
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`10 of 121
`
`
`
`Page 11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` A Well, rivastigmine has an
`unsaturated basically system. It has a
`double bond, but it has an unsaturated
`system.
` So, benzene, for example, is a very
`specific example of an alkene; right?
` Q But that wasn't my question. My
`question was whether rivastigmine is an
`alkene.
` A It's not a linear alkene.
` Q It's also not an aromatic alkene.
` A Well, it does have an aromatic
`substituent.
` Q Right. But I'm asking about the
`molecule as a whole, would it be correct to
`describe it as an alkene?
` A If I take the aromatic substituent
`in rivastigmine as an alkene, then I would
`say it could be an alkene.
` Q Even though it has other
`compounds -- other substituents?
` A It has other substituents.
` Q So, it's your position that
`rivastigmine is an alkene?
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`11 of 121
`
`
`
`Page 12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` A If I take the -- again, if I take
`the benzene system as an alkene, then
`rivastigmine is a substituted alkene.
` Q It's your position that
`rivastigmine is a substituted alkene?
` A According to what I just said, if I
`take the benzene system in rivastigmine as an
`alkene, then it's a substituted alkene.
` Q And would a person of ordinary
`skill in 1998, looking at the structure of
`rivastigmine, call it an alkene?
` A It has features of an alkene.
` Q That wasn't my question, though.
` Would a person of ordinary skill in
`the art in 1998, looking at the structure of
`rivastigmine, call it an alkene?
` A Well, that's -- if you take
`everything into account which I said
`previously, you could consider it an alkene.
` Q Would a person of ordinary skill in
`the art have considered it an alkene? Yes or
`no?
` A Yes.
` Q And you haven't produced a single
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`12 of 121
`
`
`
`Page 13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`document in which anybody has called
`rivastigmine an alkene, have you?
` MR. GLYNN: Objection to form.
` A We have actually -- in my document,
`I have talked about the susceptiblity of
`rivastigmine to oxidation. We have compared,
`or I have compared the susceptibility of
`oxidation to nicotine. Nicotine oxidation,
`in one of the references I gave you, was
`investigated and was said that nicotine
`oxidation was going according to the general,
`let's say mechanism, of alkene oxidation.
` So, in other words, yes, I think I
`have provided at least some references.
` Q That was not my question,
`Dr. Schöneich.
` My question was: You have not
`produced a single document in which anyone
`has called rivastigmine an alkene --
` MR. GLYNN: Objection to form.
` Q -- have you?
` A Well, I said before, it's a very
`special form of an alkene. It has a phenyl
`or a benzene ring. So, in this sense, it's a
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`13 of 121
`
`
`
`Page 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`very special form of an alkene.
` And I have produced references,
`such as the Carey-Sundberg, which talks at
`length about benzyl radicals, for example.
` Q You would agree with me that Carey
`and Sundberg doesn't mention rivastigmine;
`right?
` A Carey-Sundberg is a textbook. It
`doesn't mention rivastigmine.
` Q And it doesn't say that
`rivastigmine is an alkene, does it?
` A It doesn't talk about rivastigmine,
`so it doesn't say that rivastigmine is an
`alkene.
` Q So, the answer to my question is,
`yes, it doesn't say that?
` A Okay.
` Q You agree?
` A Yes, it doesn't say that.
` Q And an unsubstituted alkene would
`not contain a nitrogen atom; correct?
` A That's hard to answer. If the
`alkene is not substituted with heteroatoms,
`then it wouldn't contain a nitrogen. You
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`14 of 121
`
`
`
`Page 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`said an unsubstituted. Okay. So an
`unsubstituted alkene would not contain a
`nitrogen. Okay.
` Q And an alkene is another term for
`an olefin; is that right?
` A Yes.
` Q So, the answers that you have been
`giving me with respect to alkene would apply
`equally to olefin?
` A Yes.
` Q And when an unsubstituted olefin is
`oxidized, it cannot form an N-oxide, can it?
` A So, again, if it doesn't contain a
`heteroatom, it cannot form an N-oxide.
` Q Now, when rivastigmine oxidizes, it
`forms two main oxidative degradation
`products; is that right? One of them is a
`ketone degradant, and the other one is a
`styrene degradant?
` MR. GLYNN: Objection to form,
` foundation.
` A So, I have not seen any actual data
`with regard to rivastigmine oxidation. What
`I have done in the appendix to one of my
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`15 of 121
`
`
`
`Page 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`reports, I have presented a couple of
`mechanisms, and I think I have listed such
`products, but I have not seen actual data
`from a company presenting oxidation products.
` Q So, you don't actually know what
`products are formed by the oxidation of
`rivastigmine; is that right?
` MR. GLYNN: Objection to form.
` A I can reasonably predict what
`oxidation products can form, but I haven't
`seen actual data.
` Q So, you don't know what products
`are actually formed by the oxidative
`degradation of rivastigmine?
` A Yes.
` MR. GLYNN: Objection to form.
` MS. JACOBSEN: I'm going to mark a
` document, and we will provide
` individually stamped-up ones for each of
` the IPRs with an updated exhibit list
` after the deposition, rather than having
` two different stamped ones floating
` around, if that's okay.
` MR. LEVY: I'm sorry, are you
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`16 of 121
`
`
`
`Page 17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` marking one now, though, with the number
` that it will be stamped at?
` MS. JACOBSEN: Yes.
` MR. GLYNN: Okay. Fine, yes.
` MS. JACOBSEN: So, we will mark it
` now with the number it's going to be
` stamped at, and then we will provide
` properly stamped ones with the IPR number
` and whatever else subsequently, and we
` will provide another copy for the '549
` with the appropriate number for that.
` And this is going to be number
` 2059.
` (Exhibit 2059, N0002403 marked for
` identification, as of this date.)
` Q Dr. Schöneich, I have handed you a
`document that's been marked as Exhibit 2059.
`Have you seen this document before?
` MR. GLYNN: I'm going to object to
` the use of this document. It's clearly
` not cited in Dr. Schoneich's reply
` declaration, and any testimony on this is
` outside of the scope.
` A I can only guess.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`17 of 121
`
`
`
`Page 18
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Q Whether you have seen it?
` A Yes.
` Q Okay.
` A Possibly at the trial, but not as a
`document ever presented to me.
` Q Okay. Well, I'm going to say this
`is an extract from the NDA, Novartis' NDA
`related to rivastigmine.
` And can you see the second full
`paragraph under the heading 4.2, it says,
`"Following degradation pathways demonstrated
`for rivastigmine hydrogen tartrate summarize
`the findings."
` Do you see that?
` MR. GLYNN: I'm also going to
` object that this is one page you are
` providing of what is clearly a larger
` document, and this is objectionable for
` that reason as well.
` Q Do you see that paragraph,
`Dr. Schöneich?
` A I see the paragraph.
` Q Okay. And I just want to focus on
`the right-hand side of the pathway that is
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`18 of 121
`
`
`
`Page 19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`underneath that sentence.
` Do you see that?
` A Yes.
` Q And I just want to confirm that
`the -- first, on the right-hand side, there
`are three different structures in boxes.
` Do you see that?
` A Yes.
` Q And the first one of those would be
`described as an N-oxide; is that correct?
` A Yes.
` Q You can put that on one side.
` Do you have Exhibit 1011,
`Dr. Schöneich?
` A Yes.
` Q Can turn to Appendix A, which
`starts on page 28.
` A Yep.
` Q And here you provide five different
`schemes for the oxidative degradation of
`rivastigmine; is that right?
` MR. GLYNN: I'm going to maintain
` my objection to the use of this document.
` This -- this was not covered in
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`19 of 121
`
`
`
`Page 20
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` particularity in his reply declaration.
` This is clearly outside of the scope.
` You had the opportunity to depose
` Dr. Schöneich on this, on this document,
` and didn't do that, and instead
` substituted the trial testimony.
` So, I think the opportunity for
` this type of questioning is past.
` Q Dr. Schöneich, let me repeat my
`question. In Appendix A, you provided five
`potential schemes for the oxidative
`degradation of rivastigmine; is that correct?
` MR. GLYNN: Same objection, outside
` the scope.
` A Yes, I did.
` Q Okay. And can you just confirm for
`me that only in the fifth scheme is an
`N-oxide formed?
` A I have an N-oxide in the fifth
`scheme.
` Q And you don't have an N-oxide in
`schemes one to four; is that right?
` MR. GLYNN: Objection, outside the
` scope.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`20 of 121
`
`
`
`Page 21
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` A That is correct. But these schemes
`are not presented in order of decreasing
`importance.
` Q That wasn't my question. I'm just
`trying to establish what's in the different
`schemes.
` A Yes.
` Q Let's move to your second
`declaration, which is Exhibit 1032. It's the
`one -- yep.
` A Um-hum.
` Q Can you turn to paragraph 13?
` A Yes.
` Q And there you discuss relative
`reactivities of some aromatic hydrocarbons
`towards oxygen. Can you agree with that?
` A Yes. In the table.
` Q In the table.
` And in the sentence underneath, you
`discuss the relative reaction of the carbon
`hydrogen bond of the benzylic position. Do
`you see that?
` A I do.
` Q And what's discussed in these, this
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`21 of 121
`
`
`
`Page 22
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`paragraph and represented in the table, are
`relative reactivities, not absolute
`reactivities; is that correct?
` A That is correct.
` Q And if you turn back to paragraph
`nine.
` A Yes.
` Q And you also discuss there relative
`radical stabilities; correct?
` MR. GLYNN: Objection to form.
` A What we see in this table, which is
`on page five, paragraph nine, first of all,
`on the right-hand column, absolute values,
`these are bond dissociation energies which
`are measured, and just for comparison, in the
`middle column, they are radical -- relative
`radical stabilities.
` Q So, you are saying that methane is
`relatively less stable than the C-H bond to a
`tertiary carbon (CH3)3CH?
` A So, the carbon-hydrogen bond in
`methane is stronger than the carbon-hydrogen
`bond in the tertiary -- in the tertiary
`carbon-hydrogen --
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`22 of 121
`
`
`
`Page 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Q And that is a relative assessment;
`correct?
` MR. GLYNN: Objection to form.
` A It's a relative assessment within
`this group of compounds. But there are
`certainly absolute numbers to support that.
` Q And those numbers don't tell us
`under what conditions the radicals were
`formed, do they?
` A These numbers are absolute values
`of bond dissociation energies, so, they
`should be independent of the measurement.
`These are absolute numbers.
` Q But they don't tell me under what
`conditions the radical will form, do they?
` MR. GLYNN: Objection to form.
` A The bond dissociation energy is
`just by its mere fact a bond dissociation
`energy. It does not tell you under which
`conditions you form radicals in any chemical
`reaction.
` Q And can you turn to paragraph two?
` A Yes.
` Q And you note there that you
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`23 of 121
`
`
`
`Page 24
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`reviewed the documents that were cited by
`Dr. Klibanov in his expert report?
` A Yes.
` Q Is that a true statement?
` A Yes.
` Q Okay.
` A Can I -- can I -- though, I mean, I
`reviewed the documents relative to my role in
`this case.
` Q You didn't review all of them?
` A Not with regard to Dr. Kydonieus'
`role in the case.
` Q So, do you know which documents you
`reviewed and which ones you didn't?
` A Well, yeah.
` Q Which documents did you review from
`Dr. Klibanov?
` A Well, the ones which he uses in
`response to my declaration.
` Q And can you provide a list of those
`documents?
` A Well, I think I refer to them in
`the text.
` Q So, if you haven't referred to them
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`24 of 121
`
`
`
`Page 25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`in the text, then you haven't reviewed them?
` A I may have reviewed them but may
`have not referred to them in the text.
` Q So, I'm asking you whether or not
`you can provide us a list of the documents
`from Dr. Klibanov's report that you
`considered in forming your opinions.
` A Not off the top of my head. But if
`I had the time to go back, I probably could
`do that.
` Q Okay. Now, you recall that
`Dr. Klibanov discussed references relating to
`the hydrolysis of monomethyl and dialkyl
`carbamates; correct?
` A Yes.
` Q And you would agree with me that
`the hydrolysis of monomethyl carbamates has
`been studied experimentally since the 1930s?
` A That's what Dr. Klibanov states.
` Q And you don't dispute that, do you?
` A I don't dispute it.
` Q And you also don't dispute that the
`hydrolysis of dialkyl carbamates has been
`studied experimentally since the 1930s?
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`25 of 121
`
`
`
`Page 26
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` A Yes.
` Q And if you can turn to paragraph
`29.
` A Yes.
` Q And if you just -- have you read
`that paragraph?
` A Can I take a moment to read it?
` Q Absolutely.
` A I have read the paragraph.
` Q Okay. And you agree that the
`mechanism by which monomethyl carbamates
`undergo hydrolysis had been experimentally
`determined as of 1998?
` A I think so.
` Q And you don't dispute that the
`mechanism by which dialkyl carbamates undergo
`hydrolysis had been experimentally determined
`by 1998?
` A I don't dispute that.
` Q Okay. Now, if you can go back to
`paragraph four. Are you with me?
` A Yes.
` Q Okay. And there you have -- you
`reproduce part of Dr. Klibanov's expert
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`26 of 121
`
`
`
`Page 27
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
`declaration. Do you see that?
` A Um-hum. Yes.
` Q And that is not a complete -- that
`is not exactly, or that is not a complete
`representation of what he said relating to a
`person of ordinary skill in the art, is it?
` MR. GLYNN: Objection to form.
` A That is an excerpt from his
`statement.
` Q And should we have a look at what
`Dr. Klibanov actually said?
` A Okay.
` Q I'm going to give you a copy of
`Exhibit 2012.
` A Thank you.
` Q Do you recognize that document?
` A Yes.
` Q And do you recognize it to be the
`declaration of Professor Alexander M.
`Klibanov?
` A Yes.
` Q And that is the document that you
`are discussing in paragraph four of your
`reply declaration; is that right?
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`27 of 121
`
`
`
`Page 28
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` A I believe so.
` Q Okay. And the paragraph that you
`refer to in Exhibit 2012 -- sorry, the
`paragraph that you refer to in paragraph four
`of your declaration is paragraph 25 of
`Exhibit 2012.
` Do you see that?
` A Yes.
` Q Okay. And if you look at
`paragraph 25, you have the sentence that you
`reproduce in the middle of the paragraph that
`says, "I disagree that a POSA would be able
`to make predictions about the physical or
`chemical properties of a compound based upon
`its chemical structure."
` Do you see that?
` A I see that.
` Q And you see that Dr. Klibanov goes
`on to say, "Chemistry and pharmaceutical
`formulation are experimental sciences, and
`testing is required to determine the physical
`and chemical properties of a compound."
` Do you see that?
` A I see that.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`28 of 121
`
`
`
`Page 29
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Q Okay. And you didn't reproduce
`that second sentence in your reply
`declaration, did you?
` A I did not.
` Q Okay. So, if we can have a look at
`paragraph six of your reply declaration.
` Are you there?
` A Yes.
` Q And you can see at the bottom of
`the page, you say, "These statements are
`inconsistent with the above statement by
`Dr. Klibanov that a POSA could not make
`predictions about the physical/chemical
`properties of a compound, because
`susceptibility to hydrolysis is a chemical
`property of a compound."
` Do you see that?
` A I see that.
` Q And in that sentence, the "these
`statements" are a reference to the statements
`in paragraphs 82 and 86 of Dr. Klibanov's
`declaration; is that right?
` A Excuse me. Can you repeat that,
`please?
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`29 of 121
`
`
`
`Page 30
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Q Right.
` So, in the sentence that I just
`read to you, it starts "these statements."
`Do you see that?
` A Yes.
` Q Okay. And I am just asking you to
`confirm that the "these statements" refers to
`the statements that you refer to in the
`previous sentence in paragraph six from
`Exhibit 2012, in paragraphs 82 and 86; is
`that right?
` A Yes.
` Q Okay. So, let's have a look at
`paragraph 82 of Dr. Klibanov's declaration.
`Are you with me? It's on page 47.
` A Um-hum.
` Q And the first sentence of
`paragraph 82 of Dr. Klibanov's declaration,
`Exhibit 2012, reads, "This chemical
`instability in aqueous solution of monomethyl
`carbamates in general, and of physostigmine
`in particular, was known through
`experimentation to be due primarily to
`hydrolysis, not oxidation."
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`30 of 121
`
`
`
`Page 31
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` Do you see that?
` A I see that.
` Q So, Dr. Klibanov's opinion
`expressly refers to experimentation as the
`basis for his opinion that monomethyl
`carbamates were known to degrade by
`hydrolysis. Do you see that?
` MR. GLYNN: Objection to form.
` A So, I see the first part, and it
`says not oxidation, but what you read later
`on I don't see in this paragraph. Could you
`repeat that, please.
` Q So, I said -- the sentence in 82
`reads, "This chemical instability in aqueous
`solution of monomethyl carbamates in general,
`and of physostigmine in particular, was known
`through experimentation to be due primarily
`to hydrolysis, not oxidation."
` Do you see that?
` A Yes.
` Q Okay. And so, I am asking you to
`confirm that in that sentence, Dr. Klibanov
`expressly refers to experimentation as a
`basis for his opinion. Is that correct?
`
`TSG Reporting - Worldwide 877-702-9580
`
`Noven Exh bit 1048
`Noven v. Novartis and LTS Lohmann
`IPR2014-00550
`31 of 121
`
`
`
`Page 32
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` C. Schöneich, Ph.D.
` A I see that, yes.
` Q And that's consistent with his
`opinion that testing can be used to determine
`the chemical properties of a compound;
`correct?
` MR.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
