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`2010
`
`this is the --
`
`Q.
`
`A.
`
`This right here?
`
`Yes. This is a great place to start. Literature
`
`taught that it's cheap, available in really large scale.
`
`It
`
`has the number of carbons that you would need to build the
`
`-- call it the left—hand ring of bis—THF.
`
`In fact, it is
`
`the left hand of bis—THF, and you could stitch on the
`
`right—hand side. That's what Pezechk, Ghosh,
`
`the Erickson
`
`patent I think is ‘506, Ghosh again five years later is
`
`still working with it in '99, and Uchiyama showed a really
`
`interesting way to make it that was a pretty good advance.
`
`I think the literature taught that this is a great place to
`
`start.
`
`Q.
`
`So by 2001, one of ordinary skill would start with the
`
`dihydrofuran ring; is that right?
`
`A.
`
`Q.
`
`I think that's actually obvious.
`
`Dr. Ganem testified that he thought the approaches
`
`starting with the dihydrofuran ring and building a second
`
`ridge was, quote, "illogical." What's your view?
`
`A.
`
`Q.
`
`I disagree.
`
`And indeed, we've seen evidence of how Tibotec
`
`actually worked, and that's Exhibit 404 in evidence. And
`
`just very briefly, how did Tibotec approach the problem?
`
`A.
`
`Tibotec, if you go from top to bottom, which is the
`
`order in which they presented their ideas in this memo, does
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`1
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 42 of 54)
`
`
`
`2010
`
`this is the --
`
`Q.
`
`A.
`
`This right here?
`
`Yes. This is a great place to start. Literature
`
`taught that it's cheap, available in really large scale.
`
`It
`
`has the number of carbons that you would need to build the
`
`-- call it the left—hand ring of bis—THF.
`
`In fact, it is
`
`the left hand of bis—THF, and you could stitch on the
`
`right—hand side. That's what Pezechk, Ghosh,
`
`the Erickson
`
`patent I think is ‘506, Ghosh again five years later is
`
`still working with it in '99, and Uchiyama showed a really
`
`interesting way to make it that was a pretty good advance.
`
`I think the literature taught that this is a great place to
`
`start.
`
`Q.
`
`So by 2001, one of ordinary skill would start with the
`
`dihydrofuran ring; is that right?
`
`A.
`
`Q.
`
`I think that's actually obvious.
`
`Dr. Ganem testified that he thought the approaches
`
`starting with the dihydrofuran ring and building a second
`
`ridge was, quote, "illogical." What's your view?
`
`A.
`
`Q.
`
`I disagree.
`
`And indeed, we've seen evidence of how Tibotec
`
`actually worked, and that's Exhibit 404 in evidence. And
`
`just very briefly, how did Tibotec approach the problem?
`
`A.
`
`Tibotec, if you go from top to bottom, which is the
`
`order in which they presented their ideas in this memo, does
`
`1
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`2
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`3
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`4
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`25
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 42 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 40 of 125 Page|D: 58095
`
`2245
`
`Q.
`
`A.
`
`Q.
`
`In what respects?
`
`Both yield and purity.
`
`Okay. Bottom line on the ‘411 patent, what's your
`
`view?
`
`Is it inventive?
`
`A.
`
`Q.
`
`It is.
`
`Is it not —— is it obvious to one of ordinary skill as
`
`of the invention date in 2003?
`
`A.
`
`Q.
`
`It is nonobvious.
`
`Okay. Let's switch gears to the ‘O15 patent briefly,
`
`and that focuses on bis—THF; is that right?
`
`A.
`
`Q.
`
`That's correct.
`
`And what's your view as to the challenge of
`
`manufacturing bis—THF on commercial scale as of 2001?
`
`A.
`
`My view is that it was incredibly complex and
`
`formidable. That's the word I would use:
`
`Formidable.
`
`Q.
`
`Now, did the prior art teach the method taught in the
`
`‘O15 patent?
`
`A.
`
`Q.
`
`It did not.
`
`You were asked some questions about Dr. Ghosh‘s
`
`testimony.
`
`I'd just like to orient us to it.
`
`This is his '94 article, which I don't have the
`
`exhibit number for, but I think the record's clear what the
`
`'94 article is and —— well,
`
`I don't know what it is.
`
`This is his '94 communication; is that right?
`
`A.
`
`That's correct.
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`25
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 43 of 54)
`
`
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`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 41 of 125 Page|D: 58096
`
`2246
`
`Q.
`
`And I think you said something on your examination
`
`that —— something about its publication by allowing —— Merck
`
`allowing its publication gave some clues as to Merck's views
`
`on the project?
`
`I'd just like you to explain that.
`
`A.
`
`Generally, at Merck, we would agree to publication of
`
`material when the project had either died or we had
`
`abandoned the concept, so we would then be free to lecture
`
`and to publish.
`
`Q.
`
`Okay. Was that your inference from the publication in
`
`'94 by Ghosh?
`
`A.
`
`It is.
`
`It's actually my knowledge from the fact that
`
`I was on part of the committee that would allow things to be
`
`published. Vice presidents --
`
`THE COURT:
`
`So you published either upon death or
`
`abandonment --
`
`THE WITNESS: Yes.
`
`THE COURT:
`
`—— is that what you said?
`
`All right.
`
`Thank you.
`
`MR. DISKANT: That's PTX91, Your Honor.
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`THE WITNESS: And I will clarify. We would after
`
`a certain number of years also publish for successful
`
`things, many successful projects. But while the project was
`
`within the —— a reasonable time frame when the competition
`
`was interested, we would only publish if the program had
`
`either been abandoned or died.
`
`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 44 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 42 of 125 Page|D: 58097
`
`THE COURT: All right.
`
`Q.
`
`Now,
`
`the Ghosh '94; of these two methods on the slide,
`
`which is the '94 method?
`
`2247
`
`A.
`
`Q.
`
`rings?
`
`A.
`
`Q.
`
`A.
`
`Q.
`
`'94 is the diethyl malate.
`
`And that is starting from a chiral material making two
`
`That's correct.
`
`Is that a complicated procedure?
`
`It is.
`
`Counsel showed you Dr. Ghosh's testimony, and I don't
`
`think you actually had a chance to read it before she
`
`questioned you about it, and we looked at it a couple times.
`
`I'm not going to read it out loud again, but I would like
`
`you to read it with care.
`
`And counsel asked you whether --
`
`THE COURT:
`
`Page and line.
`
`Q.
`
`This is from Ghosh's deposition,
`
`lines —— page 77,
`
`line 22,
`
`through page 78, line 14, and what I'd like you to
`
`pay particular attention to is, what is he talking about
`
`when he's talking about this literature?
`
`MS. MAZZOCHI: Your Honor, can he read --
`
`THE COURT: Let him read it first.
`
`Then I'll hear
`
`you. All right?
`
`MS. MAZZOCHI: Okay.
`
`A.
`
`What Ghosh is referring to --
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`25
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 45 of 54)
`
`
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`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 43 of 125 Page|D: 58098
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`2248
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`THE COURT: Wait. Have you read it?
`
`THE WITNESS:
`
`I have.
`
`THE COURT: Ms. Mazzochi.
`
`MS. MAZZOCHI:
`
`The way the question was phrased,
`
`he's asking what was Dr. Ghosh himself thinking, which I
`
`don't think is appropriate for this witness to opine on
`
`Dr. Ghosh‘s state of mind.
`
`THE COURT:
`
`I didn't know someone‘s state of mind,
`
`but go ahead.
`
`MR. DISKANT:
`
`I'm just responding to a question
`
`which she asked which I hesitate to show because —— well,
`
`I
`
`don't want to lead the witness in any wa
`
`--
`
`THE COURT:
`
`I know you don't want to do that,
`
`Mr. Diskant.
`
`I know that.
`
`I know it plagued you.
`
`MR. DISKANT:
`
`It plagued me, Judge.
`
`THE COURT: But at the same time,
`
`I thought you
`
`asked him to read that.
`
`MR. DISKANT:
`
`I did.
`
`THE COURT: And what was the purpose of your
`
`having him read it?
`
`MR. DISKANT: Because I wanted to ask him his
`
`understanding of what Ghosh is talking about when he says --
`
`THE COURT:
`
`I thought he meant what were you
`
`saying, not necessarily what he was thinking.
`
`THE WITNESS: Well, Ghosh is referring to the
`
`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 46 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 44 of 125 Page|D: 58099
`
`2249
`
`diethyl malate route that we just discussed,
`
`that '94 is the
`
`chemical steps, if I can put it into words,
`
`in this diethyl
`
`malate route.
`
`The bis—THF are not very good chemistry. You
`
`would start somewhere --
`
`THE COURT: Frankly,
`
`the point is, you're just --
`
`the easiest thing is, whatever he said, he said.
`
`It's here.
`
`All right?
`
`MR. DISKANT: Absolutely, Judge.
`
`THE COURT:
`
`Go ahead.
`
`BY MR. DISKANT:
`
`Q.
`
`A.
`
`And Ghosh then moved to a different method?
`
`Yes, for the next five years, he worked on —— at least
`
`five years on dihydrofuran.
`
`Q.
`
`Okay, and as of 2001, when the ‘O15 patent is formed,
`
`what's your view about whether one of ordinary skill would
`
`make bis—THF starting with a chiral starting material that
`
`had to be formulated in two rings?
`
`A.
`
`My view is they would not.
`
`THE COURT: Why not?
`
`THE WITNESS:
`
`It's incredibly complex, and I
`
`really strongly believe that you start with a ring prebuilt,
`
`—— this —— a molecule like dihydrofuran, because you bought
`
`the four carbons,
`
`they're preassembled, and frankly, we
`
`don't have time to fool around, we need to start from a
`
`place that gets us, you know,
`
`into the chemistry so we can
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 47 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 45 of 125 Page|D: 58100
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`2250
`
`produce the drug quickly for the patients who need it. You
`
`don't want to go backwards, you want to go forwards. And
`
`you can buy it. My instructions to my people always were,
`
`if you can buy it, and it's reasonable in cost, buy it.
`
`Don't fix stuff at the front; spend all your time, if you
`
`can, at the tail end of the synthesis, where all the money
`
`is and where the value is.
`
`Q.
`
`And the inventors came up with what as their starting
`
`material?
`
`A.
`
`They came up, as I said, with this counterintuitive
`
`approach that uses protectant glyceraldehyde, and I think
`
`I've said that they only did it because everything else
`
`failed and their back was to the wall.
`
`They needed to do
`
`something, and that's their invention.
`
`Q.
`
`Were Costa and Patrocinio and Seebach and Rosini
`
`available in the mid and late 90's for anyone who wanted to
`
`use them?
`
`A.
`
`Q.
`
`They were.
`
`Did anyone use them? Until
`
`the invention of the ‘O15
`
`patent, did anyone use the references that they have relied
`
`on, Costa and Patrocinio and Seebach and Rosini,
`
`to combine
`
`to form the process of the ‘O15 patent?
`
`A.
`
`Q.
`
`No.
`
`Now, counsel spent much time walking through the
`
`details of some of these prior art references.
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`25
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 48 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 963 Filed 08/25/14 Page 46 of 125 Page|D: 58101
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`2251
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`Do you understand in the obviousness analysis that
`
`there must be a showing of a person of ordinary skill at the
`
`time of the invention would have selected and combined the
`
`prior art elements in the normal course of research and
`
`development to yield the claimed invention?
`
`A.
`
`Q.
`
`here?
`
`A.
`
`Q.
`
`I do.
`
`Is there any reason whatever to think that was true
`
`No, none whatsoever.
`
`Now,
`
`the key to --
`
`THE COURT: Why do you say that?
`
`THE WITNESS:
`
`It looks like a fishing expedition.
`
`THE COURT:
`
`I'm sorry?
`
`THE WITNESS: This looks like a fishing expedition
`
`where someone has looked at the molecules that are in the
`
`patent and then they've gone back and found four different
`
`places where they've appeared buried in the literature,
`
`pulled them out and reassembled them and said, voila, it's
`
`obvious.
`
`It's not the way it works. When you do a real
`
`analysis, you go backwards, as I pointed out, you look at
`
`many different options, and you choose the ones that you at
`
`least get the starting material and you think about them and
`
`you try them. And Tibotec did this, and they tried and they
`
`got to a reasonable scale —— it's like your analogy to
`
`Sisyphus.
`
`They tried --
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`25
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 49 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 954 Filed 08/25/14 Page 1 of 182 Page|D: 56252
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF NEW JERSEY
`
`2354
`
`JANSSEN PRODUCTS, L.P. , et al.,
`
`Plaintiffs,
`
`v.
`
`LUPIN LIMITED, et al.,
`
`:
`
`:
`
`:
`
`Civil No.
`10—cv—5954(WHW)
`
`TRANSCRIPT OF
`TRIAL PROCEEDINGS
`
`VOLUME 13
`
`Defendants.
`— — — — — — — — — — — — — — — — — — — — — — — — — — — — — — ——x
`
`Newark, New Jersey
`
`April 8, 2014
`
`BEFORE:
`
`THE HON. WILLIAM H. WALLS, U.S.D.J.
`
`Reported by:
`CHARLES P. MCGUIRE, C.C.R.
`
`Official Court Reporter
`
`Pursuant to Section 753, Title 28, United States
`
`the following transcript is certified to be
`Code,
`an accurate record as taken stenographically in
`the above entitled proceedings.
`
`s/CHARLES P. McGUIRE, C.C.R.
`
`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 50 of 54)
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`Case 2:10—cv—O5954—WHW—CLW Document 954 Filed 08/25/14 Page 95 of 182 Page|D: 56346
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`2448
`
`A.
`
`Q.
`
`Um—hum.
`
`Dr. Ghosh,
`
`the saquinavir bis—THF derivatives that you
`
`were working on reduced the molecular weight of saquinavir;
`
`is that right?
`
`A.
`
`Not just molecular weight.
`
`I was also trying to do
`
`some academic investigation with some design compound; can
`
`we replace the peptide bonds and retain the potency. Yes,
`
`that was the goal.
`
`Q.
`
`Okay. And so, but molecular weight through the
`
`replacement of the amide bonds with the bis—THF?
`
`A.
`
`Yes,
`
`that was one of the goal.
`
`The saquinavir had a
`
`very high molecular weight and so, yes,
`
`that was one of the
`
`goal,
`
`to reduce the molecular size as well, yes.
`
`Q.
`
`A.
`
`Q.
`
`Okay. And you were able to do that using the bis—THF?
`
`I was able to —— yes,
`
`I was able to do that.
`
`And —— but the saquinavir bis—THF derivatives didn't
`
`provide an increase in potency over saquinavir; is that
`
`correct?
`
`A.
`
`To the best of my knowledge, bis—THF —— when you talk
`
`about bis—THF, bis—THF contains many, many isomer, many
`
`stereochemical entities.
`
`So,
`
`to correct it properly, one of
`
`the isomer was able to show some good potency, but it's not
`
`really totally replacement of saquinavir, no, it's not.
`
`Q.
`
`Do you have an understanding of whether Merck wanted
`
`to pursue protease inhibitors with a bis—THF group?
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 51 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 954 Filed 08/25/14 Page 96 of 182 Page|D: 56347
`
`2449
`
`A.
`
`I was the scientist who discovered bis—THF, among
`
`other things at Merck.
`
`So,
`
`I would imagine that they have
`
`the right and they could pursue that if they wanted to. But
`
`bis—THF ligand is not an easy ligand to make, and my
`
`speculation is —— because I was doing a lot of —— when they
`
`called me at the time at Merck,
`
`I was very academic. My
`
`research was very academic, and they did not encourage what
`
`I was doing.
`
`Bis—THF syntheses was very long,
`
`lengthy, very
`
`academic in nature and very speculative in nature, and my
`
`real belief is scientists, knowledgeable scientists, maybe
`
`some chemists,
`
`they did not see any value of bis—THF when I
`
`was there at Merck.
`
`So,
`
`that may have been the reason they
`
`were not very excited about these and, you know, abandoned
`
`the patent.
`
`To me, you know,
`
`I was one of the scientists there
`
`among 25, 30 other scientists working on the project, and I
`
`always took some independent stand, working very different,
`
`and they used to call me with some very lofty ideas, very
`
`academic ideas, and is really away from the medicinal
`
`chemistry, and they even one time threatened me that if I
`
`don't really just follow regular research,
`
`they're going to
`
`give me VG rating, means very good rating. We know that at
`
`Merck, very good actually last but one.
`
`If you're really
`
`good,
`
`they will give you TF,
`
`top 5 percent, and TQ,
`
`then
`
`outstanding, and then something—something, and then very
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 52 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 954 Filed 08/25/14 Page 97 of 182 Page|D: 56348
`
`2450
`
`good.
`
`The last one is room for improvement.
`
`So I would
`
`imagine that they did not really like what I was doing, and
`
`that may have been the reason they probably didn't pursue
`
`that.
`
`The other thing,
`
`I believe that synthesis of
`
`bis—tetrahydrofuran is not easy.
`
`It's very laborious
`
`synthesis and been many, many steps of the synthesis also
`
`didn't work very well, and some of the scientists were aware
`
`of that. And I have not seen another paper by any other
`
`scientist by Merck Research Laboratory containing
`
`bis—tetrahydrofuran.
`
`Q.
`
`Okay. Now, let's turn to the University of Illinois
`
`and your work.
`
`Some of the sulfonamide work that you did
`
`there. There were —— from the docs that we have seen, it
`
`looks like there were four sulfonamide compounds that you
`
`made in 1994 that you brought to UIC‘s attention.
`
`Do you
`
`recall that?
`
`A.
`
`Yes.
`
`I made many compounds in 1994. Among them,
`
`those four compounds looks very good, and I brought, yes.
`
`Q.
`
`Let me hand you this document as Ghosh Exhibit 3, and
`
`we can see if those are the four compounds you're recalling.
`
`Do you recognize this document, Dr. Ghosh?
`
`Yes,
`
`I do recognize this document.
`
`Okay. And this is a March 1995 fax from you to Steve
`
`A.
`
`Q.
`
`Bertha?
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 53 of 54)
`
`
`
`Case 2:10—cv—O5954—WHW—CLW Document 954 Filed 08/25/14 Page 98 of 182 Page|D: 56349
`
`2451
`
`A.
`
`Q.
`
`As far as I'm concerned,
`
`that is correct.
`
`And Steve Bertha was an individual involved in
`
`licensing at the University of Illinois?
`
`A.
`
`Yes.
`
`I recall his name, yes.
`
`He was IP director at
`
`University of Illinois, yes.
`
`Q.
`
`And here you're sending him all the latest data, on
`
`March 6, 1995?
`
`A.
`
`Q.
`
`I believe I sent this not just alone.
`
`Okay. But this was standard nomenclature in your lab,
`
`the number compounds by year and when that year —— which
`
`compound --
`
`A.
`
`Q.
`
`When the compound was made, yes.
`
`Okay.
`
`I'm going to hand you another notebook, and
`
`it's going to be Ghosh Exhibit 6, and just let me know if
`
`you recognize this document.
`
`A.
`
`Yeah,
`
`I recognize this document. This is one of my
`
`student, John Kinkaid.
`
`He also joined my group as a
`
`graduate student and later on left without completing a
`
`degree; moved to Abbott Laboratories in Chicago.
`
`Q.
`
`Okay. And let me hand you another document as Ghosh
`
`Exhibit 7.
`
`And do you recognize that document?
`
`A.
`
`Yeah,
`
`I recall I've seen this document.
`
`I wrote this
`
`e—mail to Mike Harte.
`
`Q.
`
`Okay. And this is a March 8, 2012 e—mail; is that
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`U
`
`12
`
`B
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
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`23
`
`24
`
`25
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`CHARLES P. MCGUIRE, C.C.R.
`
`Janssen Ex. 2029
`
`Lupin Ltd. v. Janssen Sciences Ireland UC
`|PR2015-01030
`
`(Page 54 of 54)
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