BRISTOL-MYERS SQUIBB COMPANY
`
`In The Matter Of:
`
`
`
`GENENTECH, INC., and CITY OF HOPE, et 611.
`
`29.
`
`DR. IEPFERSON D. POOTE - Vol. 1
`
`Ianuary 9, 2015
`
`MERRILL CORPORATION
`
`L} k_ |
`_
`‘egg n
`
`"c
`
`_
`
`13-15 Avenue ofthe Amerucas
`1?ihF
`NewY '.NY1U'1
`Phone" 2
`55? 7400
`Fax: 212 35?.6‘|?8
`
`
`
`
`
`SANOFI V. GENENTECH
`
`[PR2015-01624
`
`EXHIBIT 2010
`
`
`
`

`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`———o0o———
`
`BRISTOL-MYERS SQUIBB COMPANY,
`
`Plaintiff/
`
`Counter—Defend
`
`Case No.:
`
`2:l3—cv—O5400—MRP—
`
`JEM
`
`GENENTECH,
`
`INC., and CITY OF
`
`HOPE,
`
`Defendants/
`
`Counter—Plaintiffs.
`
`MEDAREX, L.L.C.,
`
`Third Party Defends
`
`Counter+Claimant.
`
`VIDEOTAPED DEPOSITION OF
`
`DR.
`
`JEFFERSON D. FOOTE
`
`Friday, January 9, 2015
`
`REPORTED BY:
`
`RACHEL FERRIER, CSR 6948
`
`(NY-019567)
`
`Page2
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`APPEARANCES (Continued)
`
`ALSO PRESENT: DAVID OSGOOD, Vidoographer
`NEAL DAHIYA, Bristol—Myers Squibb and
`Medatex
`___w0___
`
`INDEX OF EXAMINATIONS
`EXAMINATION BY
`Ms. Davis
`
`6. I I 3
`
`PAGE
`
`EXHIBITS MARKED FOR IDENTIFICATION
`DESCRIPTION
`PAGE
`NO.
`Exhibit l Expert Report of Jefferson
`Poole, Ph.D.
`‘I
`
`T
`
`Exhibit 2 Rebuttal Expert Report of
`Jelferson Foote, Ph.D.
`Exhibit 3 U.S. Patent 4.8 I656‘!
`(Bates GNE-MED-071508 -
`GN E-MED-W646)
`Exhibit 4 U.S. Patent 6.331.415 Bl
`Exhibit 5 U.S. Patent ?.923.22| Bl
`Exhibit 6 U.S. Patent 4.231224
`Exhibit 7 U.S. Patent 4.495.280
`Exhibit 8
`"Genes encoding Escherichia
`coli aspartate
`Lransmrliiunoylase: The
`PyrB-pyrl opcron" by Pnuza.
`et al.
`I97
`Exhibit 9 Expert Report of Arne Skerra,
`Ph.D.
`203
`
`Exhibit I0 MGG. Molecular & General
`Genetics, an International
`Journal. aniele entitled
`"Coding Properties of Cloned
`Nitrogenase Structural Genes
`From Rhixobiumjaponicum"
`Exhibit I
`I U.S. Patent 4,666.83‘!
`
`2] I
`2 I ‘I
`
`Page 3
`
`lbwN,_.,_—_,\.ooo~..imui.no.Imi—-
`
`.....
`
`BE IT REMEMBERED that. pursuant to the laws
`governing the taking and use of depositions, on
`Friday. January 9. 20I 5. commencing at 9:40 am.
`thereof, at the Sheraton on El Carninu Real.
`625 El Camino Real, Conference Room I107. Palo Alto.
`California. before me. RACHEL FERRIER. a Certified
`Shorthand Reporter, personally appeared
`DR. JEFFERSON D. FOUTE, called as a witness by the
`Defendants, who, being by me tirst duly sworn, was
`thereupon examined as a witness in said action.
`APPEARANCES OF COUNSEL
`For the Plaintiff:
`MAYER BROWN LLP
`
`BY: RICHARD MCCORMICK, Attorney at Law
`I675 Broadway
`New York, New York IODI9
`Telephone: 212.506.2500
`Email: rmccormick@rnaye1'brown.com
`
`For the Defendants:
`PAUL, WEISS. RIFKIND. WI-[ARTON & GARRISON LLP
`BY: KIRA A. DAVIS. Attorney at Law
`ALLISON M. LUCIER. Attorney at Law
`1285 Avenue of the Americas
`New York, New York 10019
`Telephone: 212.373.3230
`Email: kdavis@pau|weiss.eorn
`a|ueicr@p‘c1ulweiss.com
`
`I:\)mt\:t\:ir\:ii—-I-i—~i—-I-I-i—~i—~i—~i—~i-t::LUhJl—‘GkDO0-JO\LfldhbJDJl—‘©\oO0“‘JChU1'p'("‘JhJi_.
`
`i\) U'|
`
`PALO ALTO, CALIFORNIA
`FRIDAY. JANUARY 9, 2015
`
`PROCEEDINGS
`
`THE VIDEOGRAPHER: Good morning.
`Here begins Video No. l in the deposition of
`Dr. Jefferson Foote in the matter of Bristol-Myers
`Squibb versus Genentech in the U.S. District Court,
`Central District of California, Case No.
`2: 1 3-cv-05400-MRP-J EM.
`
`Today's date is January 9th, 2015, and the
`time on the video monitor is 9:40 a.rn.
`
`My name is David Osgood.
`This video deposition is taking place at
`625 El Camino Real in Palo Alto, California.
`
`Counsel, would you please identify yourselves
`and state who you represent.
`MS. DAVIS: Kira Davis -- Paul, Weiss,
`Rifkind. Wharton & Garrison -- for Genentech and
`
`City of Hope.
`MS. LUCIER: Allison Lucier from Paul, Weiss.
`also for Genenteeh and City of Hope.
`MR. McCORMICK: Richard McConnick from
`
`2
`
`(Pages 2 to 5)
`
`1-800-325-3376
`
`Merrill Corporation — New York
`Page 3
`www.merrillcorp.oom/law
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`Page 6
`
`Mayer Brown for Bristol-Myers and Medarex.
`MR. BROWN: Neal Dahiya from Bristol-Myers
`and Medarex.
`
`THE VIDEOGRAPHER: Thank you very much.
`The Court Reporter today is Rachel Ferrier of
`Merrill.
`
`And would the Reporter please swear in the
`witness.
`
`__ -000---
`DR. JEFFERSON D. FOOTE
`
`called as a witness, having been
`first duly sworn, was examined and
`testified as follows:
`“-000.--
`EXAMINATION
`BY MS. DAVIS:
`
`Q Good morning, Dr. Foote.
`As you just heard, my name is Kira Davis, and
`I represent Genentech and City of Hope.
`As we discussed a little bit before we
`
`started, I understand you are feeling somewhat under
`the weather today, so if at any point in time you
`need to take a break, please just let us know and we
`can take breaks as frequently as -- as needed.
`
`Page 7
`
`Does that make sense?
`
`A Yes. Thank you.
`MS. DAVIS: So we are going to start.
`1 want to hand you five documents. so let me
`put them on the record.
`Exhibit 1 is the Expert Report of J efferson
`Foote, Ph.D., in BMS v Genentech.
`
`Exhibit 2 is the Rebuttal Expert Report of
`Jefferson Foote, Ph.D., also in this case.
`Exhibit 3 is U.S. Patent 4,8 |6,567.
`Exhibit 4 is U.S. Patent 6.33l,-415.
`And Exhibit 5 is U.S. Patent 7,923,221.
`
`l‘m handing you those documents.
`THE WITNESS: Thank you.
`(Exhibits I through 5 were marked
`for identification by the Reporter.)
`BY MS. DAVIS:
`
`Q So starting with -- they're -- they're all
`yours now.
`
`Starting with Exhibit 1, do you recognize
`Exhibit 1 to be a report that you prepared in this
`case?
`A Yes, this is.
`
`Q And if you turn to the first page of that
`report.
`
`:g\DU3-..JC5‘\t_J'I.1“_~.uJMt—'
`K)K)K)f'\JKJK)l—‘l—‘l—"l-"|—'l—‘l—‘l-‘
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`l\JMMNl\J[\)I—'+—'t—-t—-t—'t—'t—-t—lt—*t—-LnJethro»-c>tooo~4o\Ln.::.Lx:m1—~C>“3°°“4°“-”‘h""’M'—'
`
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`l\Jr\J[\JtxJt\Jr\JI—‘t—tt—-t—-t——l+—tt—-t—-
`
`A Turn to the first page.
`Q The that page of text.
`A I'm on page 1 with the " 1" at the bottom.
`Q In the Introduction, this report says that
`you have been retained by Bristol-Myers Squibb and
`Medarex, LLC.
`Do you see that?
`A Yes.
`
`Q And that is correct?
`A That is correct.
`
`Q lfl refer to those two companies today
`jointly as "BMS," will you understand what I'm
`referring to?
`A Yes.
`
`Q You -- in your first opinion -- in your first
`paragraph in your report, you indicate that you are
`providing expert opinions and testimony in this
`matter concerning the invalidity of -- of two
`patents.
`Do you see that?
`A Yes.
`
`Q And the first patent is the ‘4l5 patent?
`A Right. or Cabilly II, yes.
`Q And that was my question.
`That -- that patent is commonly referred to
`
`Page 9
`
`as "Cabilly II"; correct?
`A Mm-hmm.
`
`Q And if you turn to your stack of documents,
`Exhibit 4 is a copy of Cabilly I].
`Do you see that?
`A ‘4l5. Cabilly [1, yes.
`Q And the -- the next patent that you opine on
`is the '22l, or Cabilly 111, patent; is that
`correct?
`A That's correct.
`
`Q And if I refer to that as "Cabilly lll," we
`will all understand what -- what I'm referring to?
`A I prefer calling it Cabilly Ill rather than
`whatever the number is, '22 1.
`
`Q And Exhibit 5 in your stack of documents
`should be Cabilly III.
`Do you have that?
`A 5, Cabilly III, '22:, yes.
`Q So if at any point during the day you need to
`refer to those patents, you have them. Those copies
`are —— are for your use during this deposition.
`The other exhibit we marked is Exhibit 3.
`
`Do you have that?
`A Exhibit 2 and Exhibit 3.
`
`Q And Exhibit 3 is what's known as the
`
`3
`
`(Pages 6 to 9)
`
`1-800-325-3376
`
`Merrill Corporation — New York
`Page 4
`www.merrillcorp.com/law
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`"Cabilly I" patent; is that correct?
`A Yes.
`
`Q Okay. So you can set the patents aside for
`the moment; although, again, if at any point you
`need them -~
`A Mm-hmm.
`
`Q -- they will stay with you.
`A Are these in order, Exhibit 3, 4, 5:
`
`Cahilly I, II. III?
`Q Yes, they are in order.
`A That will help me. Thank you.
`Q You have previously served as an expert,
`opining on the validity of the Cabilly ll patent; is
`that correct?
`A Yes.
`
`Q You were retained in that case by GSK?
`A Yes.
`
`Q If you look in your report at paragraph 3 --
`and this is, again, Exhibit 1.
`ln paragraph 3, you state, in part, that
`Defendants Genentech andlor City of Hope may have an
`expert respond to this report.
`Do you see that?
`A Yes.
`
`Q That has since happened; correct?
`
`Page 11
`
`A Yes.
`
`Q And you put in a second report, a rebuttal
`report?
`A Yes.
`
`Q And that is the document that is Exhibit 2 in
`front of you right now; is that correct?
`A Yes.
`
`Q So Exhibits 1 and 2, combined, are you --
`your two reports in this case.
`Do those two reports contain a complete
`summary of the opinions you are offering in this
`case?
`A Yes.
`
`Q Sitting here today, are you aware of any
`corrections that you would like to make to either of
`your reports?
`A There was something in the first report. On
`page 5, there was a typo, line 4, where it says,
`"Moreover, anticipation does not require actual
`performance andfor suggestions in a disclosure."
`And instead of "and/or," it would be the —— better
`
`to say "performance of a suggestion in a
`disclosure."
`
`Q So, for the record, the —- the corrected
`sentence would read:
`
`U1.J2.t.-.aI\Jl—-oxooo—..Jo\u_nu:.L-aw»-<3"°O°““-‘°“""""L‘*'[\""l—'l—'D.Jf\J|\.>i\.?IkJi\.>l—'r-6r—‘l--‘r—‘l-‘I--‘l--4r-*l—'l—vc:s‘-9O°“J‘3‘U‘*“*‘*’[‘-3"‘
`
`
`
`
`Mrx)MMI:\)I\)l—-r-l—'l—'l—-l—-l—=l—'
`
`LJ'1.b-L-Jl\)lr4OKOO0-.JO\L.fi.12:l/Jl\J
`
`i\)RJ[\J[\)i\)P\Jl—‘l—'l—'l—‘l—‘l—‘l—*l—‘l—'l—‘Ln.e=Lurol—~c:\ooo—uowLnu>.cuml—tc)‘9°3*4°“‘-J‘”*‘L*"\3"‘
`
`l—"l—‘,_.Okooo~..1o\o'Iu:=oJrxJ»—-
`U'|nD-l.nJhJl—'C)‘\D(II-.JO\l.J'|iJ==-LAJl\.'t
`t\Jr\Jl\Jtx.)t\'rr\JI—‘+—t+—~i—-l—l+—t+—-i—-
`
`Moreover, anticipation does not
`require actual performance of a
`suggestion in a disclosure; it only
`requires that those suggestions
`teach a person skilled in the art
`how to implement the suggestion
`without undue experimentation.
`A That's right.
`Q Any other corrections that you are aware of,
`sitting here today?
`I
`A There was one that Dr. Fiddes pointed out.
`don't remember where it is in my report, but it had
`to do with a quote from very early in the Cohen &
`Boyer patent, and -- well, we'll -- I don't remember
`how I'd correct it, but it may come up during the
`discussion.
`
`Q Okay. And if at any point today we see the
`language you would like to correct, please let me
`know and we'll -- we'll note the correction on the
`record.
`
`A Good. Thank you.
`Q You've reviewed a report authored by
`Dr. Fiddes; is that correct?
`A That is.
`
`Q Have you reviewed any other expert reports
`
`Page 13
`
`submitted in this case?
`A No.
`
`Q Do you know that a report was submitted by a
`Dr. Silverstein?
`A Yes.
`
`Q Have you reviewed that report?
`A No.
`
`Q Are you aware that a report was submitted by
`a Dr. Casali (phonetic)?
`A Yes.
`
`Q Have you reviewed that report?
`A No.
`
`Q How about a report by Dr. Skerra?
`(TeIephonic interruption.)
`THE WITNESS: Forgive me.
`MS. DAVIS: Take as much time as you want to
`adjust the phone. These things happen.
`THE WITNESS:
`It's from the husband of a
`
`Genentech employee.
`to him now.
`BY MS. DAVIS:
`
`I certainly don't want to talk
`
`Q Are you aware that a report was put in this
`case by Dr. Skerra?
`A Yes.
`
`Q Have you reviewed that report?
`
`4
`
`(Pages 10 to 13)
`
`1-800-325-3376
`
`Merrill Corporation — New York
`Page 5
`www.merrillcorp.eom/law
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`No.
`
`Do you know Dr. Fiddes?
`No.
`
`You have never met?
`Not that I can recall.
`
`Turning to the second page of your report --
`Yes.
`
`-- you describe, in this section, some of
`your own personal background; is that fair?
`A Yes.
`
`Q ln paragraph 6, you indicate that your first
`research project in the laboratory of
`Professor David Dressler was an attempt to clone an
`antibody gene; is that correct?
`A That's correct.
`
`Q As I understand it, that project was not
`successful; correct?
`A Correct.
`
`Q You failed to clone an antibody gene?
`A 'Ihat's correct.
`
`Q When did you first clone an antibody gene, if
`ever?
`A First clone one. Well, that would have been
`
`\.OCO--.1{5\U'1n-I1‘-L.\}kJl—‘
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`in Winter's lab, and, again. it depends what's meant
`2 4
`2 5 by "clone." The first antibody I worked with 1 made
`
`Page 15
`
`synthetically.
`Q You worked with Sir Gregory Winter beginning
`in approximately 1985; is that correct?
`A That‘s correct, yes.
`Q So you believe you would have first cloned an
`antibody gene at some point in 1985 or subsequent to
`that?
`
`A That's right.
`Q You had -- you had mentioned that it might
`depend on what was meant by "cloning"; is that
`correct?
`
`A Yes. but I'm -- I'm being too worried about
`my answer.
`I synthesized a gene and cloned that and
`expressed it.
`Q What -- what, typically, do you understand
`the word "cloning" to mean in reference to a gene?
`MR. McCORMICK: Objection; vague. ambiguous.
`THE WITNESS: My understanding of cloning a
`gene is putting the DNA and coding something, such
`as an antibody, onto a replicable plasmid or other
`DNA vector.
`BY MS. DAVIS:
`
`Q And creating a synthetic gene would be
`included within that definition?
`A Yes.
`
`K000-..lC5\E_J'IaJ‘_*»bJk)l—‘
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Page 16
`
`Q There are other -- there are other ways to
`clone a gene other than by creating a synthetic
`version?
`A Yes.
`
`Q What other ways -- what -- what other types
`of methods fall within what you understand to be the
`definition of "cloning"?
`MR. MCCORMICK: Objection; vague, ambiguous.
`THE WITNESS: Many methods. One can start
`from the genome of —— of the cell that's producing
`an antibody. One can isolate messenger RNA from a
`cell, reverse transcribe that in what's called "CDNA
`
`cloning." One can take a gene that someone else has
`isolated by one of these methods and you can
`transfer that to a vector. Sometimes we call that
`
`"subcloning," but that's a form of cloning as well.
`BY MS. DAVIS:
`
`Q Do you know when reverse transcriptase was
`discovered?
`A I think that was in the late |960s.
`
`Q When did it become possible to create CDNA?
`A I don't know the origin date.
`I know that in
`this early—antibody—cloning project. that was our
`approach, so by 1997, but 1 think before then, well
`before then.
`
`Page 17
`
`Q In paragraph 7 of your report, you describe a
`project you worked on under the direction of
`Professor Evan Kantrowitz?
`A That's correct.
`
`Q And the project you worked on was studying
`the structure and function of aspartate
`transcarbamylase; is that correct?
`A That's correct.
`
`Q Did I pronounce it correctly?
`A "Aspartatc transcarbamylase." yeah.
`Q That particular protein is frequently
`referred to as "A-T Case"?
`A "A-T-C ase."
`
`Q "A-T-C ase"?
`A Attorneys always say "A-1" Case." but it's
`"A—T—C ase."
`
`Q And "ATCase" --
`A Yeah.
`
`Q -- is a common way to refer to that
`particular protein?
`A That's correct.
`
`Q In this work from the 1979-to-1980 time
`period, you attempted to clone the gene encoding
`ATCase?
`A I did.
`
`:;kDIIJ-..lO\L|"d’—‘-L\Jl\.>l—'
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`
`5
`
`(Pages 14 to 17)
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`1-800-325-3376
`
`Merrill Corporation — New York
`Page 6
`www.merril1corp.oom/law
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`Page 18
`
`Q And that effort was not successful; correct?
`A That's correct.
`
`I don't want to mislead you.
`I should add.
`That wasn't the main area of work that I was doing.
`I was working on other projects and have papers from
`that period, and this was kind of a side light.
`Q What was the main area of your work during
`that time period?
`A The main area of work in that time period in
`Dr. Kantrowitz's lab had to do with isolating and
`studying mutations in the ATCase gene that were
`reintroduced in bacteria that would substitute new
`
`amino acids at $0—CEtllf‘:Cl nonsense codons, its
`
`approach to studying protein structure that's not
`used any longer.
`Q Was protein expression a focus of your work
`in Dr. Kantrowitz's lab?
`
`A "Protein expression," do you mean
`"recombinant expression" by that question?
`Q Let's just start with expression recombinant
`or not recombinant.
`
`A Oh, well, the protein we worked with was
`expressed, was made in bacteria, but it was
`nonrecombinant.
`
`Q Were you studying expression -- the
`
`Page 19
`
`expression aspect of that protein, or were you
`studying something else?
`A We were mainly interested in how the
`protein's enzymatic activity is regulated, so we
`weren't studying how it was expressed.
`Q And you said it was nonrecombinant?
`A That's right.
`Q When did you first work on a recombinant
`protein?
`A Well, in Berkeley, when I started graduate
`school, I worked on a recombinant version of ATCase.
`
`Q And when did you hen working on a
`recombinant version of‘ ATCase?
`A When?
`
`Q When.
`I don't
`A That would be September of I980.
`know the exact date, but when I arrived in my first
`lab rotation, starting then.
`Q Did you succeed in expressing a recombinant
`protein during your time at Berkeley?
`A Oh, yes. Expression had already been worked
`out, and I used this plasmid that had been
`constructed repeatedly to prepare recombinant
`protein.
`Q And that is -- was that the beta-lactamase
`
`NIb.>P\)I\iMl\.>I—tI—-I-I-t—-i—li—lr—-t-I—=u1.t=.t.oru»—-c:>xooo~..iowo1.ts<.um»—-o\90°‘-‘°‘*”*’='WN""
`
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`L1'Ttl3-t.-Jt\)lr4C)\DO0-.1O\(.J1.l“—~.laJI\.)
`MJ\)MMI:\)I\)t—-t-t—'t—'t—-I-t—'t—'
`
`protein?
`A No, no. It was the —- it was ATCase.
`worked on ATCase in three different labs.
`
`I
`
`Q You said the plasmid had been constructed by
`others that you were working with?
`A That's right.
`Q When did you first construct a plasmid for
`the re- -- for the expression of a recombinant
`protein?
`A Did 1 construct. Well, that would have been
`
`in Winter's lab, beginning in 1985.
`You mentioned "beta iactamase," and you have
`remj nded me that. in Evan I(antrowitz's lab, I did do
`
`an experiment with recombinant beta lactamase. but
`that was not a recombinant construct that I had
`
`prepared. It was the beta lactamase on pBR322, a
`plasmid that had been constnicted in Dr. Boyer's
`lab.
`
`Q And you said the first time you prepared a
`plasmid for the expression of a recombinant protein
`was with Dr. Winter?
`
`I had worked with recombinant
`A That's right.
`plasmids with —- in Dressler's lab.
`And I might add. Dressler's lab was kind of
`a subsidiary of Walter Gilbert's lab. Dressler
`
`Page 21
`
`had —— was an assistant professor. He had been
`Gilbert's graduate student, and he was given a
`ten-year-track faculty job, but he was within the
`ambitof Gilbert. We had joint group meetings. We
`shared facility. There was a lot of interaction. I
`also --
`
`Q Go ahead.
`A Oh, no.
`
`Q Were you finished with your answer?
`A Yeah, I was going to say something not
`germane.
`
`I
`Oh. but let me just make sure I say it.
`don't want to mislead you.
`I don't want to deprive
`you of information.
`I, in Berkeley, in my first year, also worked
`with a recombinant protein called -- what's it
`called.
`It has several names. One is kanarnycin
`phosphotransferase, and you've —— you've triggered
`my memory, and, in fact, that was my first
`successful attempt at making a expression construct,
`which I did my first year, beginning at the very end
`of 1980. That project was not continued.
`Q And you said that was a recombinant protein?
`A Yes.
`
`Q And you constructed the vector used to
`
`6
`
`(Pages 18 to 21)
`
`
`,_.{3kD(II-..lO\t.J'|ulh<.xJl\Jl—‘U.‘”3LuhJ._,cDkDG3‘JO\Lfi”:__LuPQ._.c:KDG3~JO\LfiIJ30LUD.Jl4
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`
`1-800-325-3376
`
`Merrill Corporation — New York
`Page 7
`www.merrillcorp.com/law
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`K:lK}KJl'\:lK:lKJl—‘l-"l-"l-'l*l—‘l—‘l-"l-‘l—‘Lntecomi—-c2tooo~.1<:wLn.::.comi—-c>“"°°“4‘3‘L“"*""~“""‘
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`express that protein?
`A Yes. Yes.
`I had -- well, yes.
`Q Did you achieve expression of the recombinant
`protein?
`I could give you more deals so you --
`A I did.
`I can speed things along.
`The -- that gene had already been cloned, and
`so I took it from one vector that -- where it had
`
`been cloned, and I transferred that into something
`called a "runaway plasmid," which would —— supposed
`to exist in very high copy number. Would have many
`thousands of copies per E. coli cell and was thought
`to be better for high expression of recombinant
`proteins.
`I did get it transferred. Expression was
`rather ambiguous.
`It -- in retrospect, I probably
`just should have stuck with what I had and not try
`to overexpress it.
`Q The phosphotransferase, what -- I'm sorry.
`What was the full name of that particular protein?
`A Kanamycin, k-a-n-a-m-y-c-i-n.
`Q And the kanamycin phoso- --
`A Phosphotransferase,
`p-h—o—s-p-h—o-t-r—a—n—s—f—e—r—a—s—e.
`Q The kanamycin phosphotransferase, what type
`of protein is that?
`
`Page 23
`
`A That's a drug-resistance protein. It
`modifies kanamycin, a drug.
`It modifies other
`similar drugs as well, and modifies them by
`tiansfernhg a phosphate group onto them. rendering
`them nontoxic to the cell that harbors this gene.
`Q Is it a bacterial protein?
`A It is, yes.
`Q Is it a single-unit protein?
`A Yes.
`
`Q And you cloned it into another type of
`bacteria?
`
`I put it into a
`A I -- it was still E. coli.
`new vector and transferred that into E. coli.
`
`Q So it's an E. coli protein that you
`transvected into E. coli?
`
`A I don't want to mislead you again. I'm not
`sure I would call it an "E. coli protein." It came
`originally from -- oh, I‘m not sure where it came
`from originally. It was encoded on something called
`"Transposon 5," but I don't recall who first
`identified that. A transposon is a gene that can
`hop from bug to bug.
`Q It is bacterial, though?
`A It is bacterial.
`
`Q You said someone else had cloned it first; is
`
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`that correct?
`A Yes.
`
`Q Do you know who that was?
`A I don't know.
`It was -- it was widely
`available.
`
`Q When you say "widely available," do you mean
`you could order it?
`A Not from a company. He would phone someone
`up and ask for it, though.
`Q So phone someone up in another lab and ask --
`A That's right.
`Q -- for a copy?
`A That's right.
`Q You received your Ph.D. in 1985?
`A That's right.
`Q So in 1983, by definition, you did not have a
`Ph.D.?
`A That's correct.
`
`Q You then went to work for Sir Gregory Winter?
`A That's correct.
`
`Q If] refer to Sir Gregory Winter as
`“Dr. Winter," is that --
`A That's fine.
`
`Q That's acceptable?
`A It's tough for me to say "Sir Gregory."
`
`Page 25
`
`thinking of him as a knight.
`Q And you were with Dr. Winter from 1985 to
`1992?
`
`A That's right. Although, during that time, I
`kind of had a —— I kind of had dual mentors. Greg
`and -- sorry, Dr. Winter and says Cesar Milstein.
`Q Have you spoken to Dr. Winter recently?
`A No.
`
`Q Are you aware that there is a related case to
`this one in which Dr. Winter has issued an opinion?
`A I was told that he had given an opinion, but
`I don't know much about the case.
`I thought it
`might be this case, but I didn't pay attention.
`I
`didn't read his opinion.
`Q And you have not spoken to Dr. Winter about
`this case?
`
`A No. My last —— I last spoke with him it must
`have been 201 1, 2012.
`It was a 60th—birthday pany
`for him that I went to.
`
`Q When is the last time you spoke to Dr. Winter
`about —— when, if ever, is the last time you spoke
`to Dr. Winter about antibodies?
`A That would have been that time.
`
`Q The 60th-birthday party?
`A That's right.
`
`7
`
`(Pages 22 to 25)
`
`1-800-325-3376
`
`Merrill Corporation — New York
`Page 8
`www.merrillcorp.oom/law
`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`Page 26
`
`Page 28
`
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`
`Q And you have never spoken to him about this
`case?
`A No.
`
`Q A minute ago you had -- strike that.
`Just to go back a little bit on -- in --
`strike that.
`
`You had said that the kanamycin
`phosphotransferase that you were working with, you
`would obtain from another lab; is that correct?
`A The —— the gene for the phosphotransferase
`was from another lab.
`
`Q And this is in what time frame?
`A Might even have been the same lab,
`Schachn1an's lab.
`It really was very widespread.
`This was I980.
`
`Q At that time, was it normal for labs to share
`materials with other labs of -- of the type of this
`gene that you were working with?
`A Yes.
`
`MR. MCCORMICK: Objection.
`THE WITNESS: There was no material transfer
`
`agreement that we used back then.
`BY MS. DAVIS:
`
`Q You would -- how often did you have occasion
`to phone up another lab and ask for material?
`
`Page 2?
`
`A I would guess once or twice a year, like
`that. Often -- I didn't have to phone another lab
`often. The material was within the same building.
`In the case of the so—called runaway plasmid,
`I had to go downstairs. The person who made it was
`there.
`
`Q Turning to page 3 of your report, in
`paragraph -- paragraph 12 of your report, you refer
`to the time you spent prosecuting a drug delivery
`patent.
`Do you see that?
`A Yes.
`
`Q That is a patent application on which you are
`the inventor?
`A One of two inventors.
`
`Q Has that patent issued?
`A Not yet.
`Q How long have you been prosecuting that
`patent?
`A I think the original provisional application
`would have been in 2004, so that's more than ten
`years.
`
`Q Do you -- strike that.
`I don't want to -- I'm not asking about any
`discussions with patent lawyers.
`
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`t\Ji\Jl\JF\Jf\Ji\Jl—‘I»—‘l»—'l—'l—‘l—‘l»—'l—'
`
`Sitting here today, do you have any
`expectation as to when, it‘ at all, that patent will
`issue?
`
`A This year.
`Q And for the record, you are literally fingers
`crossed.
`
`So you are hoping that patent will issue in
`2015'.’
`
`In fact. just this morning, I received
`A Yes.
`word that we had put in a response to the most
`recent Office Action.
`
`Q And if the patent issues in 2015, that would
`be approximately 11 years of prosecution?
`A Yes.
`
`Q In -- on page 4 of your report, there's a
`section called "Prior Testimony."
`Do you see that?
`A Page —— yes.
`Q And this indicates that you gave deposition
`testimony in Glaxo Group Limited v. Genentech, Inc.,
`et al.
`
`Do you see that?
`A Yes.
`
`Q That is a case in which you opined on the
`validity of the Cahilly II patent?
`
`Page 29
`
`A That's right.
`Q Have you reviewed your deposition transcript
`that is described in this "Prior Testimony" section?
`A I've not gone back and reread the whole
`transcript.
`Q Sitting here today, are you aware of anything
`in that deposition transcript that you believe was a
`misstatement?
`
`MR. MCCORMICK: Objection.
`THE WITNESS:
`I can't think of a
`misstatement.
`BY MS. DAVIS:
`
`Q There is a second case listed under "Prior
`Testimony."
`A Yes.
`
`Q What does that case relate to, generally
`speaking?
`A That's an employment law case. The
`plaintiff. Perez—MeIgosa, was dismissed from the
`University of Washington with a allegation of
`scientific misconduct.
`
`Q Were you an expert or a fact witness or
`something else?
`A Expert, and I analyzed whether this was,
`indeed, misconduct.
`
`8
`
`(Pages 26 to 29)
`
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`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`Page 30
`
`Page 32
`
`kQO0-.]O\L..l‘|tI>aU.ll\)l-‘
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
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`
`Q Did not -- that case in no way relates to the
`Cabilly patents?
`A No rclation.
`
`Q I want to turn now to Section IV of your
`report, "Legal Principles to be Applied."
`A Yes.
`
`Q The first section under that relates to
`anticipation; correct?
`A Correct.
`
`Q And you state:
`"It is my understanding that for a
`patent claim to be invalid as
`anticipated, there must be clear and
`convincing evidence that all
`elements of the claim are disclosed
`
`in a single piece of prior art,
`either expressly or inherently."
`Do you see that?
`A Yes.
`
`Q Are you aware of there being any other
`requirements in order to demonstrate anticipation,
`to your understanding?
`A Well, I'm not a lawyer, but I -- I'm not
`aware of anything outside that. If it's all
`disclosed within one piece of prior art, then I
`
`Page 31
`
`believe that anticipates the patent in question.
`Q In conducting your anticipation analysis, did
`you take into account whether all elements of the
`claim appeared in a single prior art reference
`arranged as in the claim?
`MR. MCCORMICK: Objection; vague, ambiguous.
`THE WITNESS:
`I didn't really -- what do you
`mean "arranged"?
`BY MS. DAVIS:
`
`Q Do you have an understanding of what it means
`for all the elements of the claim to appear in a
`single prior art reference arranged as in the
`asserted claim?
`
`A You have used "arranged" again, and I sense
`that there's a lot of legal precedent concerning
`that term, so I'm a little reluctant to give a
`definitive answer.
`
`Q So my first question is: Do you use the
`concept of whether all of the elements of the claim
`appear on a single prior art reference arranged as
`in the claim -- so my first question is whether you
`used that concept?
`MR. MCCORMICK: Same objection.
`THE WITNESS: Again. I'm getting hung up on
`"arranged."
`
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`
`What I saw in the patents that I analyzed was
`that they were -- the elements all seemed to be
`thematically related. There was no sort of separate
`part to a patent —— or to one —— say the Boyer or
`Bujard patent that dealt with a different topic, and
`I didn't inappropriately, I think, combine something
`from any irrelevant part with the main part -- that
`wasn't in the main part.
`BY MS. DAVIS:
`
`Q In -- I'm sorry. Were you finished?
`A In that it -- to that extent -- to that
`
`extent, I made sure that all the elements I was
`
`refening to were thematically linked together, thus
`arranged, yeah.
`Q You mentioned combining elements; is that
`correct?
`
`A Combining elements?
`Q Was one aspect of your approach to combine
`elements of, let's say, the Cohen & Boyer patent?
`A I wrote about combining elements of the Cohen
`& Boyer patent with a paper by Riggs & Itakura.
`Q And that was in connection with your
`obviousness analysis?
`A Yes.
`
`Q Sticking to anticipation --
`
`Page 33
`
`A Right.
`Q -- did you take into account whether all of
`the elements of the claim of the Cabilly II claim
`appeared in, let's start with, Cohen & Boyer,
`combined, as they were in Cabilly?
`MR. MCCORMICK: Objection: vague, ambiguous,
`and confusing.
`I find the question kind of
`THE WITNESS:
`abstract. That's why I'm having trouble answering
`1t.
`
`BY MS. DAVIS:
`
`Q Did you take into account, in conducting your
`anticipation analysis, whether the elements you
`observed in the prior art were combined in that
`prior art in the same way that they were combined in
`Cabilly?
`A Yes, I did.
`
`Q How did you take that into account?
`A I saw that what was done in the prior art was
`the same as what was done in Cabilly, more or less,
`with the vectors and genes somewhat changed.
`Q You indicate in your report that the
`disclosure can be either expressed or inherent; is
`that correct?
`
`A That's right.
`
`9
`
`(Pages 30 to 33)
`
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`
`

`
`DR.
`
`JEFFERSON D. FOOTE — 1/9/2015
`
`Page 3é
`
`Page 36
`
`Q Sticking to anticipation, does any of your
`anticipation opinion depend on a disclosure in one
`of the pieces of prior art being an inherent
`disclosure?
`
`A Again, that seems very broad and kind of
`abstract for me to answer in a categorical way.
`If -- if we come to particular examples of
`inherency, I could maybe describe them or how I used
`them.
`
`Q In the abstract, you don't know whether you
`relied exclusively on expressed disclosure; is that
`correct?
`
`A Expressed disclosure. Well, no —— well. for
`example, Cohen & Boyer lists antibodies as a type of
`recombinant protein that could be made with their
`method, but they don't have an express example of
`that, if that's what you mean.
`Q So my question right now is limited
`to -— strike that.
`
`In your description of the law of
`anticipation --
`A Right.
`Q -- you describe what you understand to be an
`inherent discl