throbber
HIGHLY CONFIDENTIAL
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`Page 1
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF NEW JERSEY
`
`JANSSEN R&D IRELAND,
`
`et al.,
`
`Plaintiffs,
`
`VS.
`
`LUPIN LIMITED, et al. ,
`
`Defendants.
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`\/\/\/\/\/\/\/\/\/é
`
`Civil Action No.
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`10-5954 (WHW)
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`(MCA)
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`HIGHLY CONFIDENTIAL
`
`The videotaped deposition of MICHAEL JOHN
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`ZAWOROTKO, Ph.D., called for examination,
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`taken
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`pursuant to the Federal Rules of Civil Procedure
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`of the United States District Courts pertaining to
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`the taking of depositions,
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`taken before JANET L.
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`ROBBINS, CSR No. 84-2207, Certified Shorthand
`
`Reporter of the State of Illinois, at 6 West
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`Hubbard Street, Suite 500, Chicago, Illinois, on
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`October 11, 2013, at 9:03 a.m.
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`wnVwnVerfieXLcon1
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`516-608-2400
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`VERHEXTREPOKHNGCONWANY
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`Janssen Ex. 2028
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR201501030
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`(Page1 of8)
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`

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`HIGHLY CONFIDENTIAL
`
`Q.
`
`A.
`
`In general any API.
`
`There are many, many, many, many
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`instances of hydrates and solvates forming from
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`impurities in the solution, many, many examples.
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`Q.
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`Can you point me to a single example
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`showing that an ethanolate was formed based on the
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`presence of an ethanol stabilizer in methylene
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`chloride solution?
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`A.
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`No, but there are many, many, many
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`examples of organic molecules forming solvates or
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`hydrates from very low concentrations of the
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`solvent or —— or water in the solution.
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`Q.
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`Have you ever formed an ethanolate of
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`any API using methylene chloride to synthesis the
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`API?
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`Page 193
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`A.
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`I have used methylene chloride in
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`ethanol as a mixed solvent before consciously, but
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`I don't recall what the outcome of those
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`experiments was.
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`Q.
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`My question is: Have you ever formed
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`an ethanolate of any API using methylene chloride
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`in the synthesis of that API?
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`A.
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`Q.
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`No, not to my knowledge.
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`Ghosh 1998 does not teach how to make
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`an ethanolate form of darunavir, correct?
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`212-267-6868
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`516-608-2400
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`VERITEXT REPORTING COMPANY
`
`Janssen Ex. 2028
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 2 of 8)
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`

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`HIGHLY CONFIDENTIAL
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`MS. RAGHAVAN: Objection to form, vague
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`as to the term "teach."
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`THE WITNESS:
`
`If teach —— if by teach
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`you mean provides enough information for a
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`person of ordinary skill in the art to get to
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`darunavir —— crystalline darunavir
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`monoethanolate,
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`I believe that the Ghosh 1998
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`does, as I detail in my report.
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`BY MS. ROYZMAN:
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`Q.
`
`The question is: Does Ghosh 1998
`
`provide any conditions for crystallizing
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`darunavir?
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`vague.
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`MS. RAGHAVAN: Objection to the form,
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`THE WITNESS:
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`It does not provide any
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`specific conditions. But as I detail in my
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`report,
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`I believe that it —— nevertheless,
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`that the —— or,
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`I should say,
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`that the
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`isolation of the solid form is obvious to a
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`person of skill in the art,
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`the step of
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`isolation would be obvious to a person of
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`skill in the art.
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`MS. ROYZMAN: Let's go off the record
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`and take a break.
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`MS. RAGHAVAN: Okay.
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`212-267-6868
`
`wWw.VeriteXt.c0m
`
`516-608-2400
`
`VERITEXT REPORTING COMPANY
`
`Janssen Ex. 2028
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 3 of 8)
`
`

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`HIGHLY CONFIDENTIAL
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`Page 195
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`THE VIDEOGRAPHER: This is the end of
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`03:04:57
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`Media No. 3. We're going off the record.
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`The time is 3:03 p.m.
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`(A recess was had.)
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`THE VIDEOGRAPHER: This is the
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`03:24:
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`22
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`beginning of Media No. 4. We are back on the
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`record.
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`The time is 3:23 p.m.
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`Please proceed.
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`(Zaworotko Exhibit 13 was marked
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`for identification.)
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`BY MS. ROYZMAN:
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`Q.
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`Dr. Zaworotko, let me hand you as
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`Exhibit No. 13 U.S. Patent 6,248,775,
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`issued
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`June 19, 2001.
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`I believe you refer to this patent as
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`the '775 patent in your expert report and that we
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`have been talking about from time to time today.
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`MS. RAGHAVAN: This is 13?
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`THE WITNESS: Yeah, my lucky number.
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`MS. RAGHAVAN: Okay.
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`MR. REDDY:
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`I think Ghosh '98 was
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`03:25:
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`Exhibit 13, wasn't it?
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`THE WITNESS: No, it was 14 --
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`MR. REDDY: Oh.
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`THE WITNESS:
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`—— according to this.
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`03:25:
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`212-267-6868
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`(Page 4 of 8)
`
`

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`HIGHLY CONFIDENTIAL
`
`Q.
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`Okay.
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`So darunavir was patented as of
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`June 19, 2001, correct?
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`MR. REDDY: Objection to the extent it
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`seeks a legal conclusion and outside the
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`scope of his report.
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`Page 197
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`THE WITNESS:
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`The —— the date of the
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`issue of the patent was June 2001.
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`I'm --
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`I'm just curious about the priority date,
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`which is why I was looking in there, but
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`it's --
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`BY MS. ROYZMAN:
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`Q.
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`I can tell you what the priority date
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`is.
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`The priority date is August 1994 --
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`So it's ahead --
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`Q.
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`A.
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`Q.
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`Yeah.
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`—— for —— for darunavir.
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`Yeah, it's ahead of Ghosh '98.
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`Yes. And so darunavir was patented
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`prior to the filing of your
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`'613 patent which
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`lists a variety of anti—HIV compounds, correct?
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`MS. RAGHAVAN: Objection to the form.
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`THE WITNESS:
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`I'll have to go back.
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`MS. RAGHAVAN:
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`I think you're referring
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`to Zaworotko Exhibit 11, right?
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`MS. ROYZMAN:
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`I believe so, yes.
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`MS. RAGHAVAN: Yeah.
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`212-267-6868
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`(Page 5 of 8)
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`

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`HIGHLY CONFIDENTIAL
`
`THE WITNESS: Yes.
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`BY MS. ROYZMAN:
`
`Q.
`
`Okay. And does claim 7 provide any
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`crystallization conditions for darunavir?
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`MS. RAGHAVAN: Objection to the form,
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`vague.
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`THE WITNESS: Claim 7 provides a
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`structural formula for darunavir.
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`In order
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`for that claim to be issued,
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`I would assume
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`that there is detail concerning how to
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`isolate darunavir in the specification.
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`BY MS. ROYZMAN:
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`Q.
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`Okay. Does claim 7 provide of a
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`structure for darunavir monoethanolate?
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`MS. RAGHAVAN: Objection to the form,
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`vague.
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`THE WITNESS:
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`To go back to where we
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`were very early today,
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`there's a difference
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`between a molecule and a material. And claim
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`3 simply provides the structure of the
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`molecule whereas darunavir —— crystalline
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`darunavir monoethanolate is a material.
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`So
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`they are —— they don't mean the same thing
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`with respect to molecules, materials and
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`medicines.
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`212-267-6868
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`wWw.VeriteXt.c0m
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`(Page 6 of 8)
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`

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`HIGHLY CONFIDENTIAL
`
`BY MS. ROYZMAN:
`
`Q.
`
`Dr. Zaworotko,
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`just so the record is
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`clear,
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`I believe you misspoke. Claim 7 is the
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`claim to the darunavir molecule, correct?
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`MS. RAGHAVAN: Objection to the form,
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`calls for a legal conclusion.
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`BY MS. ROYZMAN:
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`Q.
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`A.
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`I think you said claim 3.
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`Oh, sorry.
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`I'm looking —— yeah, a
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`compound —— never mind.
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`Sorry.
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`Yeah, claim 7 provides the structural
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`formula of a compound, which we now know is
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`darunavir, but it refers to the molecule and not
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`the material.
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`Page 199
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`Q.
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`Okay.
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`So you don't see in claim 7 any
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`reference to darunavir monoethanolate, correct?
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`MS. RAGHAVAN: Objection to the form,
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`calls for a legal conclusion.
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`THE WITNESS:
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`I would not want to
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`ask —— answer that question without being
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`able to review the document in its entirety
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`so that I could determine what information is
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`provided in the specification about the
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`nature of what that means.
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`So I would not interpret that that
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`00
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`212-267-6868
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`
`(Page 7 of 8)
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`

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`HIGHLY CONFIDENTIAL
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`means it's just the molecule unless I had
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`Page 200
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`03:31:03
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`read how the molecule was characterized and
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`03:31:
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`whether it was characterized as a material or
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`03:31:
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`as a molecule or both.
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`BY MS. ROYZMAN:
`
`Q.
`
`Okay.
`
`Just looking at claim 7, do you
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`see darunavir monoethanolate there?
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`MS. RAGHAVAN: Objection to the form,
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`vague.
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`THE WITNESS: You're asking me a
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`question out of the context of the document
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`as a whole. And what I know about claims is
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`that they have to be interpreted in the
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`context of the specification.
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`So it could mean, it could be that if I
`
`were to go through the document, I'd find the
`
`crystal structure of darunavir monoethanolate
`
`and that's what led to that claim.
`
`So you're asking me to know what's in
`
`the specification in order to interpret what
`
`that means.
`
`BY MS. ROYZMAN:
`
`Q.
`
`Okay.
`
`I'm really trying to ask a very
`
`simple question.
`
`It's just with your eyes looking
`
`at column 221, claim 7, do you see darunavir
`
`03:31:
`
`45
`
`03:31:
`
`47
`
`03:31:
`
`51
`
`03:31:
`
`53
`
`03:31:
`
`55
`
`03:31:
`
`58
`
`03:31:
`
`59
`
`03:31:
`
`59
`
`03:32:
`
`01
`
`03:32:
`
`04
`
`212-267-6868
`
`wWw.Veritext.com
`
`516-608-2400
`
`VERITEXT REPORTING COMPANY
`
`Janssen Ex. 2028
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 8 of 8)

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