·1· · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
`· · · · · ·BEFORE THE PATENT AND TRIAL APPEAL BOARD
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`·3· ·CASE NO.· IPR2015-00165
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`·4· ·CASE NO.· IPR2015-0016
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`·5· ·CASE NO.· IPR2015-00169
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`·6· ·PATENT 8,765,167 B2
`· · ·______________________________
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`·8· ·BIODELIVERY SCIENCES INTERNATIONAL,
`· · ·INC.,
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`· · · · · · · ·Petitioner,
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`· · · · · vs.
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`· · ·MONOSOL RX, LLC,
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`· · · · · · · ·Patent Owner.
`13· ·______________________________
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`15· · · · · · CONFERENCE CALL WITH JUDGE BONILLA
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`16· · · · · · · · · DATE:· October 29, 2015
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`17· · · · · · REPORTED BY:· MICHAEL FRIEDMAN, CCR
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`· · · · · · · ·ESQUIRE DEPOSITION SOLUTIONS, LLC
`23· · · · · · · · 1384 Broadway - 19th Floor
`· · · · · · · · · ·New York, New York· 10018
`24· · · · · · · · · · · (212) 687-2010
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`25· ·JOB· #· J0 217243
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`Page 1
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`· · · · · ·BEFORE THE PATENT AND TRIAL APPEAL BOARD
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`·3· ·CASE NO.· IPR2015-00165
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`·4· ·CASE NO.· IPR2015-0016
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`·5· ·CASE NO.· IPR2015-00169
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`·6· ·PATENT 8,765,167 B2
`· · ·______________________________
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`·8· ·BIODELIVERY SCIENCES INTERNATIONAL,
`· · ·INC.,
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`· · · · · · · ·Petitioner,
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`· · · · · vs.
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`· · ·MONOSOL RX, LLC,
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`· · · · · · · ·Patent Owner.
`13· ·______________________________
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`14
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`15· · · · · · CONFERENCE CALL WITH JUDGE BONILLA
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`16· · · · · · · · · DATE:· October 29, 2015
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`17· · · · · · REPORTED BY:· MICHAEL FRIEDMAN, CCR
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`· · · · · · · ·ESQUIRE DEPOSITION SOLUTIONS, LLC
`23· · · · · · · · 1384 Broadway - 19th Floor
`· · · · · · · · · ·New York, New York· 10018
`24· · · · · · · · · · · (212) 687-2010
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`25· ·JOB· #· J0 217243
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`·1· · · · · · · · TRANSCRIPT of the proceeding, said
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`·2· ·proceeding being taken by and before MICHAEL
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`·3· ·FRIEDMAN, a Notary Public and Certified Court
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`·4· ·Reporter of the State of New Jersey, at HOFFMANN &
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`·5· ·BARON, 6 Campus Drive, Parsippany, New Jersey, on
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`·6· ·October 29, 2015, commencing at approximately 12:55
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`·7· ·in the afternoon.
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`·1· ·A P P E A R A N C E S:
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`·2· ·MCCARTER & ENGLISH
`· · ·265 Franklin Street
`·3· ·Boston, MA· 02110
`· · ·(617) 449-6500
`·4· ·BY:· ·KIA L. FREEMAN, ESQ.
`· · · · · · ·-and-
`·5· · · · ·WYLEY S. PROCTOR, ESQ.
`· · ·Attorneys for Petitioner
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`·8· ·HOFFMANN & BARON
`· · ·6 Campus Drive
`·9· ·Parsippany, NJ· 07054
`· · ·(973) 331-1700
`10· ·BY:· ·MICHAEL I. CHAKANSKY, ESQ.
`· · · · · · · -and-
`11· · · · ·DANIEL A. SCOLA, JR., ESQ.
`· · ·Attorneys for patent owner
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`·1· · · · THE COURT:· Good afternoon.· This
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`·2· ·is Judge Bonilla I'm on the line with
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`·3· ·Judges Pratt and Yang.· I understand
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`·4· ·we're calling in relation to IPR Nos.
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`·5· ·2014-00165, '168 and '169.
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`·6· · · · Is that correct?· And do I have --
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`·7· · · · MR. CHAKANSKY:· No, it's 2015.
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`·8· · · · THE COURT:· Did I say '14?· I meant
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`·9· ·2015, I apologize.· I was thinking too
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`10· ·fast.
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`11· · · · MR. CHAKANSKY:· No, that's all
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`12· ·right.· Thank you, your Honor.· My name
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`13· ·is Michael Chakansky.· I'm here with
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`14· ·Daniel Scola.· We represent patent owner
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`15· ·MonoSol RX.· Also here are counsel for
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`16· ·petitioner.
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`17· · · · MS. PROCTOR:· Good afternoon, your
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`18· ·Honors.· My name is Wiley Proctor and
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`19· ·with me is Kia Freeman.· We are
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`20· ·representing the petitioner, BioDelivery
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`21· ·Sciences International, Incorporated,
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`22· ·and as an initial matter, I want to
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`23· ·apologize for the delay.· We understood
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`24· ·this call would not take place for
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`25· ·another hour or so, and so we stepped
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`·1· ·out of the building, and we really do
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`·2· ·apologize for the delay.
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`·3· · · · THE COURT:· That's okay.· There was
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`·4· ·a mixup here.· We weren't sure if we
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`·5· ·could get it together either, so I'm
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`·6· ·sure you probably heard misinformation
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`·7· ·also.· That's fine.
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`·8· · · · So we understand that the
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`·9· ·deposition is ongoing right now?
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`10· · · · MS. FREEMAN:· Yes.
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`11· · · · THE COURT:· Today, and I assume
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`12· ·it's in relation to Mr. Myers.
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`13· · · · Is that correct?
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`14· · · · MR. CHAKANSKY:· That is correct.
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`15· · · · THE COURT:· Okay.· And I understand
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`16· ·you guys have initiated the call.· Is
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`17· ·that correct or is it --
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`18· · · · MR. CHAKANSKY:· Yes, we have an
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`19· ·issue in that we're exceeding the scope
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`20· ·of the deposition and asking for legal
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`21· ·opinions.
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`22· · · · And the most egregious, right now,
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`23· ·is about a series of several pages of
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`24· ·transcript relating to the ownership,
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`25· ·transfer of ownership, assignment of
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`·1· ·Mr. Myers' rights, whether he retained
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`·2· ·any rights in his patent.· None of that
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`·3· ·has anything to do with his declaration,
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`·4· ·which talks about what his patent
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`·5· ·discloses in the '167 and the '292
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`·6· ·patent, which is incorporated by
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`·7· ·reference.· And there are other
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`·8· ·instances of outside the scope.· We've
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`·9· ·let it go because we just wanted to go
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`10· ·on.
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`11· · · · But now he's asking sensitive
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`12· ·things about whether ownership was
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`13· ·transferred.· There are other
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`14· ·proceedings involving some of the same
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`15· ·patents, the '292 patents, I believe,
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`16· ·and other patents that called the '292
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`17· ·for priority that we were involved in
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`18· ·litigation, or at least MonoSol patent
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`19· ·owners involved in litigation with BDSI,
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`20· ·and we -- considering that some of the
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`21· ·questions are directed for purposes of
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`22· ·that and not for purposes of the
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`23· ·discovery on things related to his
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`24· ·declaration.
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`25· · · · And additionally, there are some
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`·1· ·documents that were not identified
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`·2· ·before, had not been submitted as
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`·3· ·exhibits by either party, that are now
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`·4· ·for the first time being proffered to
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`·5· ·the witness and he's being asked to
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`·6· ·answer questions about it.
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`·7· · · · THE COURT:· Okay.· And then those
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`·8· ·documents, according to you all, don't
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`·9· ·have anything to do with what he opines
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`10· ·in his declaration.
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`11· · · · MR. CHAKANSKY:· No.
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`12· · · · MR. SCOLA:· That's correct, that's
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`13· ·correct.
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`14· · · · THE COURT:· Okay.· In the event --
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`15· ·I'm sorry, the ownership interest, is
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`16· ·that in relation to the patents at issue
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`17· ·that he opined about?
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`18· · · · MR. CHAKANSKY:· Patents at issue
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`19· ·that he opined about?· Yes, there are
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`20· ·questions about ownership and the
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`21· ·heritage of ownership.
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`22· · · · THE COURT:· The '167 patent?
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`23· · · · MR. CHAKANSKY:· No.· They've been
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`24· ·focusing right now on the '292 patent,
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`25· ·which is referred to in his declaration.
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`·1· · · · THE COURT:· Oh, I see, about the
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`·2· ·patent that he discusses in the
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`·3· ·declaration.
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`·4· · · · MR. CHAKANSKY:· Yes.
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`·5· · · · THE COURT:· Can you point me to the
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`·6· ·paragraph in which you're --
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`·7· · · · MR. CHAKANSKY:· Do you want me to
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`·8· ·go -- recite what some of the testimony
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`·9· ·or --
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`10· · · · THE COURT:· I just want to know
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`11· ·what in particular might not relate to
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`12· ·his declaration in any way.
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`13· · · · MR. CHAKANSKY:· Well, it relates to
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`14· ·ownership and his understanding of what
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`15· ·happens when you assign rights in
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`16· ·ownership to one of the patents that is
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`17· ·referred to in his declaration.· And it
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`18· ·also discussed --
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`19· · · · THE COURT:· It also discusses the
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`20· ·'167, and he says that he's a named
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`21· ·inventor of the '292.
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`22· · · · MR. CHAKANSKY:· As well.
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`23· · · · THE COURT:· Content of which is
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`24· ·incorporated into the '167, okay.
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`25· · · · MR. CHAKANSKY:· Right, and there
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`·1· ·were questions about who are the
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`·2· ·inventors on both of those patents.
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`·3· · · · THE COURT:· Okay.· I think I
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`·4· ·understand.· And what are the additional
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`·5· ·documents that he's being questioned
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`·6· ·about?
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`·7· · · · MR. CHAKANSKY:· One was a LinkedIn,
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`·8· ·paper purported to be from LinkedIn.
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`·9· ·Another was a copy of the combined
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`10· ·declaration of power of attorney from --
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`11· ·I believe for the '292.
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`12· · · · THE COURT:· Okay.· All right.
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`13· ·Petitioner, I would like to -- we'd like
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`14· ·to go over the email.· Can you respond
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`15· ·to some of the issues that have been
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`16· ·raised here?
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`17· · · · MS. PROCTOR:· Absolutely, your
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`18· ·Honors.· As an initial matter, and I've
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`19· ·got three points.· I'm sorry, I talk too
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`20· ·fast for the court reporter.
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`21· · · · As an initial matter, we'd actually
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`22· ·moved on from this line of questioning.
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`23· ·We don't intend to go back to it, and
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`24· ·we'd actually moved on to a new line of
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`25· ·questioning regarding statements that
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`·1· ·he's explicitly made in his declaration.
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`·2· ·I'm assuming that that's not the
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`·3· ·concern.
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`·4· · · · Secondly, with respect to the
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`·5· ·assignment and ownership, Mr. Myers is
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`·6· ·not, and does not purport to be an
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`·7· ·independent expert in this case.· He's a
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`·8· ·named inventor on the '167 and the '292
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`·9· ·which is incorporated by reference into
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`10· ·the '167 and both of which are at issue
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`11· ·in this case.
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`12· · · · We are very much entitled -- we
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`13· ·would very much like to know about
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`14· ·whether Mr. Myers still has an ownership
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`15· ·interest in the patents, whether he's
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`16· ·being compensated with respect to his
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`17· ·testimony in this case.· For example,
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`18· ·Mr. Myers does not include in his
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`19· ·declaration a typical statement that I
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`20· ·see in most declarations, which says,
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`21· ·"My compensation is not based on the
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`22· ·outcome of this case."
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`23· · · · We do not know his ownership
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`24· ·interest in the company, his ownership
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`25· ·interest in these patents, and I think
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`·1· ·it definitely goes to the weight of his
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`·2· ·testimony if he is entitled to a
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`·3· ·significant financial incentive based on
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`·4· ·what he testifies.
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`·5· · · · MR. CHAKANSKY:· And I would just
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`·6· ·say --
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`·7· · · · MS. PROCTOR:· And also -- I'm
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`·8· ·not -- please, three points.· A second
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`·9· ·point.
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`10· · · · THE COURT:· So it's hard for me to
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`11· ·know exactly who is talking.· So let me
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`12· ·have counsel for petitioner finish her
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`13· ·piece and then we'll let the patent
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`14· ·owner respond.
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`15· · · · MS. PROCTOR:· Thank you, your
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`16· ·Honor.· And along those lines, in
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`17· ·addition to the credibility and weight,
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`18· ·it also goes to any potential bias this
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`19· ·witness might have in giving testimony.
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`20· · · · And third, with respect to the
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`21· ·documents, I respectfully believe
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`22· ·Mr. Chakansky is confused about the
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`23· ·rules.· He's been telling us in the
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`24· ·deposition we're required to identify
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`25· ·all documents in the Notice of
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`·1· ·Deposition.
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`·2· · · · I have reviewed the rules, your
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`·3· ·Honor, in the CFR, and it appears to me
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`·4· ·that the rule for requiring deposition
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`·5· ·exhibits to be identified in a notice is
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`·6· ·limited to direct testimony as opposed
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`·7· ·to cross examination, which this is. I
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`·8· ·don't believe we are required to
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`·9· ·identify every exhibit that we plan on
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`10· ·using in a deposition in our Notice of
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`11· ·Deposition.
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`12· · · · With respect to the two documents
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`13· ·that he mentioned, the first is
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`14· ·Mr. Myers' LinkedIn profile regarding
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`15· ·his professional experience, which he is
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`16· ·an inventor in this case and his
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`17· ·experience is relevant.· And second of
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`18· ·all, it's a declaration and power of
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`19· ·attorney in the '292 patent, which, as
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`20· ·patent owner, has conceded is relevant
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`21· ·to this case and is incorporated by
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`22· ·reference into the patent challenge in
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`23· ·this case.
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`24· · · · Unless your Honors have any other
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`25· ·questions, that is my response.
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`·1· · · · THE COURT:· Okay.· Patent owner,
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`·2· ·would you like to --
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`·3· · · · MR. CHAKANSKY:· Yes.· I mean, the
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`·4· ·assignment questions were -- the primary
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`·5· ·one group, and the questions were sort
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`·6· ·of along the lines of, assuming you
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`·7· ·assigned the rights in a an application
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`·8· ·to an International Fluidics, is it your
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`·9· ·understanding you would then have the
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`10· ·authority to assign your rights to
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`11· ·another company.· It was never asked if
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`12· ·he had an ownership interest in the
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`13· ·patent.· He was never asked that at all.
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`14· · · · He was never asked whether or not
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`15· ·he's being compensated.· He happens to
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`16· ·be an employee of patent owners, so
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`17· ·there was nothing to say he was
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`18· ·compensated separately for his time
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`19· ·here.
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`20· · · · Additionally, there were other
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`21· ·questions that go to his relationship
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`22· ·with certain companies that may or may
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`23· ·not even be in existence now.
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`24· · · · So I guess that's about it.
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`25· · · · THE COURT:· Now, let me ask you,
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`·1· ·just so we know, because we're coming
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`·2· ·into this a little cold, I haven't
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`·3· ·looked at it in a bit, is the
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`·4· ·declaration that he's being deposed on
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`·5· ·today, is it identical in all three of
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`·6· ·the cases?
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`·7· · · · MR. CHAKANSKY:· Yes, it is.
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`·8· · · · THE COURT:· Okay.· All right,
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`·9· ·that's helpful.
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`10· · · · MR. CHAKANSKY:· And I don't think
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`11· ·he's been asked a direct question yet on
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`12· ·it.
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`13· · · · THE COURT:· Okay.· And let me just
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`14· ·ask something for a bit more
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`15· ·clarification.· So he is an inventor on
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`16· ·both the '167 patent, which is at issue,
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`17· ·that has the claims that are being
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`18· ·challenged in the case, and the '292 one
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`19· ·that he mentions as being incorporated
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`20· ·by reference.
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`21· · · · Is that correct?
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`22· · · · MR. CHAKANSKY:· That is correct.
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`23· · · · MS. PROCTOR:· Yes, your Honor, and
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`24· ·the '292 actually takes up most of
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`25· ·Mr. Myers' declaration for the record.
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`·1· · · · MR. CHAKANSKY:· I disagree with
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`·2· ·that characterization.· You have parts
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`·3· ·that are in both those patents.
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`·4· · · · THE COURT:· And just let me just
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`·5· ·follow up.· It's my understanding that
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`·6· ·the issues that you have with the
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`·7· ·questioning, the questioning is already
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`·8· ·done, and so that -- I thought I heard
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`·9· ·counsel for petitioner say something
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`10· ·along the lines of there weren't going
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`11· ·to be any more questions relating to the
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`12· ·assignment issue or relating to the
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`13· ·documents that are being discussed
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`14· ·today.
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`15· · · · Is that correct?
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`16· · · · MS. PROCTOR:· That is correct, your
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`17· ·Honor.· We've moved on.
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`18· · · · MR. CHAKANSKY:· And certain of the
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`19· ·recent questions have also been outside
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`20· ·the scope.· We don't -- we want this
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`21· ·deposition -- we'd like this deposition
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`22· ·to focus in on his declaration, which
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`23· ·we've yet to discuss, and we're getting
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`24· ·a lot of extraneous questions.· And
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`25· ·quite honestly, the last time we asked,
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`·1· ·we asked for guidance too late.· And
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`·2· ·we'd like to know whether or not we're
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`·3· ·limited here, the scope of the cross
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`·4· ·examination to the declaration.
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`·5· · · · MR. SCOLA:· Which is the direct
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`·6· ·testimony.
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`·7· · · · THE COURT:· Okay.· Just one second.
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`·8· · · · MR. CHAKANSKY:· Thank you.
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`·9· · · · THE COURT:· Okay.· We're back
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`10· ·online.· The judges are actually going
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`11· ·to confer for a few minutes.· I think
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`12· ·what we're going to do is we're going to
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`13· ·go ahead and get off the phone for about
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`14· ·ten minutes.· So we will come back on at
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`15· ·1:20 and we'll get some feedback to you
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`16· ·at that time.· But we're going to talk
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`17· ·about it a little bit.
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`18· · · · MR. CHAKANSKY:· So we just stay on
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`19· ·the line, right?
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`20· · · · THE COURT:· You can either stay on
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`21· ·the line -- you can stay on the line if
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`22· ·you like.· We're going to get off and
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`23· ·then we'll come back because that would
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`24· ·be easiest, if you don't mind, because
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`25· ·then you'll have --
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`·1· · · · (Brief recess taken.)
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`·2· · · · THE COURT:· First things first. I
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`·3· ·do notice that the court reporter is on
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`·4· ·the line in relation and obviously that
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`·5· ·person is recording -- is transcribing
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`·6· ·the entire deposition.· We would like a
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`·7· ·copy of the transcript as it relates to
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`·8· ·this call.
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`·9· · · · As a separate matter, we were
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`10· ·wondering whoever is responsible for the
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`11· ·court reporter could file that in
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`12· ·relation to this call.
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`13· · · · MS. PROCTOR:· Absolutely, your
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`14· ·Honor.
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`15· · · · MR. SCOLA:· Yeah.· You would like
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`16· ·it up to the present time?
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`17· · · · MR. CHAKANSKY:· Well, just the part
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`18· ·that involves the judge.
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`19· · · · THE COURT:· Just the part that
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`20· ·relates to the call.· And then, when you
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`21· ·file the deposition transcript, you can
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`22· ·go ahead and have the whole thing,
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`23· ·including the call, you don't have to
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`24· ·cut it out.· I just want to have a
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`25· ·record of the call separate as a
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`·1· ·separate exhibit.
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`·2· · · · MS. PROCTOR:· Thank you, we will,
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`·3· ·your Honor.· Thank you.
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`·4· · · · THE COURT:· All right.· So as an
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`·5· ·initial matter, we understand there are
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`·6· ·going to be no more questions along the
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`·7· ·line of the assignment, ownership, and
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`·8· ·in relationship to the documents that
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`·9· ·are in dispute.
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`10· · · · And with that in mind, the panel
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`11· ·has conferred and we wanted to let
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`12· ·patent owner know that you are already
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`13· ·authorized to file a motion to exclude,
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`14· ·and this is in relation to any issues
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`15· ·that relate to the federal rules of
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`16· ·evidence, including relevancy.
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`17· · · · So if there's something in there,
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`18· ·in the transcript, that gets, you know,
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`19· ·used in a paper that's filed, or for
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`20· ·whatever reason, and you want to exclude
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`21· ·it for lack of relevancy, you have a
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`22· ·vehicle to do that.
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`23· · · · MR. CHAKANSKY:· Okay.
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`24· · · · THE COURT:· We also, while we are
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`25· ·sympathetic, we understand the situation
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`Page 18
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`·1· ·you're describing, and we're not opining
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`·2· ·as to whether this has happened or not,
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`·3· ·but we understand that it is your
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`·4· ·position that they may be asking
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`·5· ·questions in this deposition in relation
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`·6· ·to this IPR as a vehicle to get
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`·7· ·information that might not be
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`·8· ·necessarily relevant to the IPR, but in
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`·9· ·fact relevant to related litigation
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`10· ·somewhere else.
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`11· · · · If it turns out after it's all over
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`12· ·that you feel that's what has happened,
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`13· ·you may negotiate a call with the board
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`14· ·to seek authorization for a motion to
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`15· ·strike.· And at that point, we will
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`16· ·address whether a motion to strike is
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`17· ·worthwhile to get the testimony in that
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`18· ·regard gone from the record all
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`19· ·together.
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`20· · · · MR. CHAKANSKY:· Thank you.
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`21· · · · THE COURT:· Patent owner, do you
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`22· ·have any additional questions at this
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`23· ·time?
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`24· · · · MR. CHAKANSKY:· No, as long as we
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`25· ·stay within the scope on the
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`Page 19
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`·1· ·declaration, that's what we're here for,
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`·2· ·and we appreciate.· And we'll be able to
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`·3· ·move to exclude for relevancy, and if we
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`·4· ·think it's -- if we believe it's for
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`·5· ·purposes other than this proceeding, we
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`·6· ·will have the ability to initiate a call
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`·7· ·with the board to ask for a motion to
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`·8· ·strike.
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`·9· · · · THE COURT:· Okay, yes.· I think
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`10· ·that's probably the best way to deal
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`11· ·with it, especially since it's not --
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`12· ·you know, we're not necessarily deciding
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`13· ·at this point what is or is not beyond
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`14· ·the scope.
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`15· · · · MR. CHAKANSKY:· Yes.· Thank you,
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`16· ·your Honor.
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`17· · · · THE COURT:· And petitioner, did you
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`18· ·have any other questions at this time?
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`19· · · · MS. PROCTOR:· No, your Honor.
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`20· ·Thank you.
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`21· · · · THE COURT:· Okay, great.· Thank you
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`22· ·very much.
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`23· · · · MR. CHAKANSKY:· Thank you so much
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`24· ·for your time.
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`25· · · · THE COURT:· Okay.· Thank you.
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`Page 20
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`·1· ·Bye-bye.
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`·2· · · · (Whereupon the conference call was
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`·3· ·concluded at 1:25 p.m.)
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`Page 21
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`·1· · · · · · · · · ·C E R T I F I C A T E
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`·2· · · · · · · · I, MICHAEL FRIEDMAN, a Certified Court
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`·3· ·Reporter of the State of New Jersey, certify that
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`·4· ·the foregoing is a true and accurate transcript of
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`·5· ·the proceedings in the above-entitled matter at the
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`·6· ·time and place aforesaid.
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`22· · · · · · · · · ·____________________________
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`23· · · · · · · · · ·MICHAEL FRIEDMAN
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`24· · · · · · · · · ·License No:· 30XI0022800
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`25· · · · · · · · · ·Dated:· November 3, 2015
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`Page 22
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