throbber
IPR2016-00710
`Transcript of February 9, 2017 Conference Call
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice
`David F. McGowan
`Pro Hac Vice
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`Michael R. Fleming
`Reg. No. 67,933
`David I. Gindler
`Pro Hac Vice
`Joseph M. Lipner
`Pro Hac Vice
`Irell & Manella LLP
`1800 Avenue of the
`Stars, Suite 900
`Los Angeles, CA
`90067
`
`
`Filed on behalf of Patent Owners Genentech, Inc. and City of Hope by:
`
`David L. Cavanaugh
`Reg. No. 36,476
`Owen K. Allen
`Reg. No. 71,118
`Heather M. Petruzzi
`Reg. No. 71,270
`Robert J. Gunther, Jr.
`Pro Hac Vice
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MYLAN PHARMACEUTICALS, INC., AND
`MERCK SHARP & DOHME CORP.,
`Petitioners,
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
`
`Case IPR2016-007101
`Patent 6,331,415 B1
`____________________________________________
`
`TRANSCRIPT OF FEBRUARY 9, 2017 CONFERENCE CALL
`
`1 Case IPR2017-00047 has been joined with this proceeding.
`
`
`
`

`

`
`
`Transcript of Conference Call
`
`Date: February 9, 2017
`Case: Mylan Pharmaceuticals Inc. -v- Genentech, Inc. and City of Hope (PTAB)
`
`Planet Depos
`Phone: 888-433-3767
`Fax: 888-503-3767
`Email: transcripts@planetdepos.com
`www.planetdepos.com
`
`WORLDWIDE COURT REPORTING | INTERPRETATION | TRIAL SERVICES
`
`

`

` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - - - - - - - - - - -
`MYLAN PHARMACEUTICALS, INC., :
` :
` Petitioner, :
` : Cause No.
` vs : IPR2016-00710
` : US Patent 6,331,415
`GENENTECH, INC., and :
`CITY OF HOPE, :
` :
` Patent Owners. :
`- - - - - - - - - - - - - - -
`
` Telephonic Conference Call
` Thursday, February 9, 2017
` 3:31 p.m.
`
`Job No.: 134995
`Pages: 1-51
`Reported by: Bonnie Panek
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`Transcript of Conference Call
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`2
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` Telephonic Conference Call, held pursuant
`to agreement, before Bonnie K. Panek, Notary Public
`of the State of Texas.
`
` A P P E A R A N C E S
` ON BEHALF OF PETITIONER:
` PETER J. CURTIN, ESQUIRE
` ERIC R. HUNT, ESQUIRE
` DEANNE M. MAZZOCHI, ESQUIRE
` NEIL B. MCLAUGHLIN, ESQUIRE
` RAKOCZY, MOLINO, MAZZOCHI, SIWIK, LLP
` 6 West Hubbard Street, Suite 500
` Chicago, Illinois 60654
` (312) 527-2157
`
` ON BEHALF OF PATENT OWNERS:
` OWEN ALLEN, ESQUIRE
` LAW OFFICE OF WILMER CUTLER PICKERING
` HALE AND DORR, LLP
` 950 Page Mill Road
` Palo Alto, California 94304
` (650) 858-6000
`
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`ON BEHALF OF PATENT OWNERS (CONTINUED):
` DAVID L. CAVANAUGH
` LAW OFFICE OF WILMER CUTLER PICKERING
` HALE AND DORR, LLP
` 1875 Pennsylvania Avenue, NW
` Washington, DC 20006
` (202) 663-6025
`
` JEFFREY DENNHARDT, ESQUIRE
` ROBERT J. GUNTHER, JR.
` LAW OFFICE OF WILMER CUTLER PICKERING
` HALE AND DORR, LLP
` 7 World Trade Center
` 250 Greenwich Street
` New York, New York 10007
` (212) 230-8830
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`
`ON BEHALF OF MERCK:
`KATHERINE A. HELM, ESQUIRE
`SIMPSON, THATCHER & BARTLETT, LLP
`425 Lexington Avenue
`New York, New York 10017
`(212) 455-2000
`
`RAYMOND N. NIMROD, ESQUIRE
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, New York 10010
`(212) 849-7000
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` C O N T E N T S
` PAGE
`ITEM NUMBER 1:
` By Ms. Mazzochi 9
` By Mr. Gunther 12
` By Ms. Mazzochi 18
`RULING BY JUDGE GREEN: 20
`ITEM NUMBER 2:
` By Ms. Mazzochi 22
` By Mr. Gunther 23
`RULING BY JUDGE GREEN: 24
`ITEM NUMBER 3:
` By Ms. Mazzochi 24
` By Mr. Gunther 25
` By Ms. Mazzochi 26
`RULING BY JUDGE GREEN: 27
`ITEM NUMBER 4:
` By Ms. Mazzochi 28
` By Mr. Gunther 29
` By Ms. Mazzochi 32
`RULING BY JUDGE GREEN: 34
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` C O N T E N T S (CONTINUED)
` PAGE
`ITEM NUMBER 5:
` By Ms. Helm 35
` By Mr. Gunther 39
` By Ms. Helm 42
`RULING BY JUDGE GREEN: 45
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` P R O C E E D I N G S
` JUDGE GREEN: Good afternoon. This is
`Judge Green, and I have on the line with me Judges
`Scheiner and Mitchell. This is a conference call on
`IPR2016-00710 to which IPR2017-00047 has been
`joined. I would like to start with a roll call.
`Who do I have for patent owner?
` MS. MAZZOCHI: Yes, Your Honor.
` MR. GUNTHER: Your Honor --
` MS. MAZZOCHI: Oh, sorry.
` MR. GUNTHER: That's okay. For patent
`owner you have Bob Gunther, Dave Cavanaugh, Owen
`Allen and Jeff Dennhardt all from the Wilmer Hale
`firm.
` JUDGE GREEN: I'm sorry. Somebody else
`was about to speak. Okay. Then who will be
`speaking for patent owner?
` MR. GUNTHER: Your Honor, Bob Gunther. I
`will be speaking for patent owners.
` JUDGE GREEN: Okay. Thank you very much.
`Who do I have for petitioner Merck?
` MR. NIMROD: Your Honor, Ray Nimrod from
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`Quinn, Emanuel, and Katherine Helm from Simpson,
`Thatcher.
` JUDGE GREEN: And then who do I have for
`petitioner Mylan?
` MS. MAZZOCHI: Good afternoon, Your
`Honor. You have Deanne, D-E-A-N-N-E, Mazzochi,
`M-A-Z-Z-O-C-H-I, along with Eric Hunt, Neil
`McLaughlin and Peter Curtin, and I will be speaking
`on behalf of the Mylan petitioners.
` JUDGE GREEN: Okay. And then who will be
`speaking on behalf of petitioners generally?
` MS. MAZZOCHI: Your Honor, I will speak
`to -- for petitioners generally on issues one
`through four that we put before Your Honors, and
`then Merck's counsel will address any issues
`relating to item number five.
` JUDGE GREEN: Okay. And then who will be
`speaking for Merck as to item five?
` MS. HELM: Kathy Helm.
` JUDGE GREEN: Okay. Thank you very much.
`Do we have a court reporter on the line?
` THE REPORTER: Yes, you do. This is
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`9
`
`Bonnie Panek with Planet Depos.
` JUDGE GREEN: Okay. And then who will be
`submitting a transcript of the call?
` MR. GUNTHER: We will, the patent owners,
`Your Honor.
` JUDGE GREEN: Thank you. Okay. It's my
`understanding that petitioners requested this call.
`Petitioner, would you like to begin? We can start
`with number one.
` MS. MAZZOCHI: Thank you very much, Your
`Honor. So the issue with number one is whether we
`may depose Doctors Cabilly, Holmes, Riggs and Wetzel
`who are all inventors on the patent at issue here,
`as well as McKnight and Harris who were two expert
`witnesses.
` And the reason why petitioners are
`seeking the depositions of these individuals is
`because the patent owner has relied on testimony
`from six of -- these six individuals in connection
`with their patent owner response, and in particular
`those -- they are relied on not as just supplemental
`testimony, but they are specifically relied on as
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`10
`
`stand alone declarations to support various points
`in patent owner's response, for example in
`IPR2016-00710 at pages 12, 18 and 19.
` And we submit that there is a principle
`that allows this to be treated as routine discovery
`under 37 CFR 42.51 B1, subpart 2 because it's
`affidavit testimony and it's effectively being
`prepared for this proceeding and relied upon by the
`patent owners.
` Now, we acknowledge that rather than
`prepare identical but new declarations to those six
`witnesses the patent owners made the strategic
`choice to rely on declarations that were created for
`past disputes involving the 415 patent at issue
`here, and in particular the inventor declarants were
`submitted in Cabilly v. Boss which is interference
`number 102572 from October 28th, 1991.
` And the expert declarations were
`submitted in connection with reexamination numbers
`90-7542 and 90-007859, and the petitioners were not
`parties to these parties. The patent owners are
`relying on this testimony and the declarations for a
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`11
`
`very important premises regarding the state of the
`prior art, key facts on the timing of the alleged
`inventions, who was first to prepare the alleged
`inventions, and these declarations are cited
`multiple times in over 42 paragraphs.
` So we basically submit that Genentech
`relying on this testimony is equivalent to relying
`on freshly prepared affidavits and makes the
`declarants' cross-examination routine discovery.
`And we know that the board has previously considered
`circumstances where a patent owner has submitted
`declarations to the PTO in other proceedings.
` And one approach that the board has taken
`is that if you do have a substantive declaration or
`affidavit that you are going to affirmatively rely
`on that is from the patent owner that the patent
`owner also submitted in other proceedings it's
`considered to have been affirmatively put in use as
`affidavit testimony by the patent owner.
` And the patent owner either has to make
`that person available for deposition or the panel
`will not consider the patent owner's positions that
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`12
`
`rely on that declaration and give it no weight
`precisely because those statements have not been
`subject to cross-examination.
` And Judge Green, we note that one case
`where that approach was followed was Ikaria, Inc. v.
`GeNO, LLC, 2014 West Law 4274078, 2014,
`IPR2013-00253, April 1st, 2014.
` JUDGE GREEN: Can you restate that IPR
`number?
` MS. MAZZOCHI: Sure. IPR2013-00253.
` JUDGE GREEN: Thank you.
` MS. MAZZOCHI: I believe the decision was
`April 1st, 2014, and a similar analysis was followed
`in PGR proceedings, Altaire Pharmaceuticals, Inc. v.
`Paragon BioTek, Inc. PGR2015-0011, paper number 29,
`April 1st, 2016.
` JUDGE GREEN: Okay. I think I have your
`position. Patent owner, would you like to respond?
` MR. GUNTHER: Yes, Your Honor. This is
`Bob Gunther. Your Honor, our position on this is
`that we have three declarants that were -- as to
`which we have submitted declarations specifically
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`13
`
`for this IPR. That's Dr. Fiddes, Dr. Gentz and
`Julie Davis. With respect to those three we've
`given them dates for deposition and they will all be
`deposed in early March.
` So what we're now faced with is -- and I
`think this again in terms of the language of the
`rule is clearly not routine discovery, so what we
`have done is put in for limited purposes
`declarations from other proceedings, one an IPR --
`I'm sorry, a ex parte brief and the other an
`interference proceeding to give the board some
`general background with respect to the invention and
`the state of the art.
` And our position is that none of those
`additional declarations, none of which were prepared
`for purposes of the IPR, ought to be allowed as
`routine discovery. Now, there have been two IPR
`decisions just cited to you. In the back and forth
`that we had with them they've never mentioned those.
`I have not had an opportunity to look at them.
` I'm not sure whether they occurred before
`or after the rule change but, Your Honor, our
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`14
`
`position is that with respect to these we're willing
`obviously and we get -- we're prepared to give them
`the depositions of the declarants where they were
`prepared and submitted specifically because of the
`IPR.
` These other ones, again for general
`background, we think it would be inappropriate, and
`the other thing I will say, Your Honor, we told them
`this. With respect to these inventors and experts
`from these prior proceedings the only one that we
`have as a current employee is Dr. Riggs and the
`others we don't -- and we told them this.
` We don't have the ability to compel their
`attendance by way of, you know, sort of a consulting
`agreement or a contract, and so, Your Honor, they
`haven't made in our judgment any showing under the
`Garmin factors. You know, we asked them to do that
`during the meet and confer and they did not. They
`have not done that now, and so we think that these
`depositions should be denied.
` MS. MAZZOCHI: I'm going to object to --
` JUDGE GREEN: Let me finish with patent
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`15
`
`owner first, please. Why are you relying on these
`declarations, because I do agree with petitioner
`that while the declarations may be evidence of what
`happened in the previous proceedings if you're
`offering them for the truth of which they've been
`asserted we are going to give them little weight if
`petitioner is not able to cross-examine the deponent
`-- I mean the expert.
` MR. GUNTHER: Yeah, let me just take them
`in two categories. There are declarations from four
`inventors that we submitted, and what we would --
`our point in submitting those declarations was --
`and they're relied on in one background section of
`the PLR. The reason we submitted those is to
`basically give -- to put some background in terms of
`what -- how the invention came to be.
` They are very general, and if the court
`were to look at sort of the parts of the PLR where
`we have cited those they're sort of in a section
`around pages 18 through 19. It's two pages of our
`PLR where we're basically giving a little bit, and I
`emphasize a little bit of detail in terms of the
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`16
`
`invention that led to the 415 patent, and so that's
`one.
` And so to the extent that we've relied on
`these we've relied on them in a very limited way,
`and we don't think that relying on them in that very
`limited way would make -- open, you know, all of
`these inventors up for litigation style depositions,
`which is really what I think they're asking for.
` And then, Your Honor, there's two other
`declarants. One is Dr. McKnight. These are both
`from one of the ex parte reexams with respect to the
`415 patent. We've relied on one paragraph of his
`declaration for the proposition that multiple
`persons of extraordinary skill in the art were
`unaware of anyone who had independently expressed
`the multiple different subunits of a eukaryotic
`protein in a single host cell prior to 1983. That's
`the sum and substance of what we rely on him for.
` We've also submitted his article, the
`Harris article which Your Honor will recall from the
`Sanofi proceedings is something that actually came
`out right in April of 1983 and it talks about the
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`17
`
`state of the art in terms of what types of
`antibodies had been recombinantly produced as of
`that time.
` So again, very -- Your Honor, very much
`in terms of background very confined, and so we're
`not -- I don't think in any way we're sort of
`overdoing this. The last person that I'll -- is Dr.
`Harris again from the reexam, the ex parte briefs
`and we're relying on him, a couple of paragraphs
`from his declaration at pages 11 and 12 of the PLR
`for again basically that similar proposition of Dr.
`McKnight.
` So when you step back from this, Your
`Honor, what I want to emphasize to you is that while
`we did put in these declarations, and while we do
`believe that the board ought to look at them and
`take them into account, they are very much for
`purposes of general background and they're not sort
`of things -- they're not the kinds of declarations
`that we're basically pinning our case on?
` And what we think they're doing is having
`seen that they're trying to utilize that as a basis
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`to sort of take, you know, depositions, take six
`depositions at a point where at least Merck has a
`litigation going on relating to the Cabilly-Cree
`patent, and so we think that there may well be
`motives in terms of what they're trying to do here
`that have nothing to do with the IPR.
` JUDGE GREEN: Petitioner, would you like
`to respond?
` MS. MAZZOCHI: Yes, Your Honor. First I
`would like to note that we did actually give the
`patent owner the Ikaria case in an E-mail and it
`didn't make a difference in meet and confer efforts.
`Second, you know, I really dispute the notion that
`patent owner is only using this in one spot in their
`declaration.
` When it gets to the meat of their
`obviousness analysis at page 48 they talk about
`whether or not this art is predictable, and they use
`their discussion at pages 10 to 17 where the
`discussion exists to talk about how there wouldn't
`-- you know, you wouldn't be able to find
`obviousness.
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`19
`
` They cite these things again at page 65
`when they're talking about skepticism in the art and
`relying on a notion that, you know, even someone
`with extraordinary skill wasn't able to make this
`thing work. So we actually do believe that this
`gets into the heart of the disputed issues between
`the parties and, you know, and that we are going to
`be prejudiced if we're not permitted to
`cross-examine.
` I did want to make note that even if
`these depositions are considered to be additional
`discovery we certainly meet all of the Garmin
`factors. There's no question we're going to find
`something useful. The whole reason why we will find
`something useful is because the patent owners have
`submitted them on these specific 415 patent issues.
` We are not seeking to obtain their
`litigation positions or strategy for this position
`-- or for this proceeding. We're not going to be
`able to get the deposition any other way, and I
`think that the request for the deposition is easily
`understandable, and certainly we will make all
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`20
`
`efforts needed to make it less burdensome.
` If we need to, you know, find these
`witnesses in different locations we're happy to go
`to them. We're happy to, you know, do something on
`a weekend if we need to or in the evening, and I
`know that that was something that was important in I
`believe it was Eli Lilly and Company versus the
`Trustees of the University of Pennsylvania, and that
`was IPR2016-00458, paper 53 at 4 to 7, December
`16th, 2016. Taking those steps demonstrates that
`it's not overly burdensome, so --
` JUDGE GREEN: I think I understand both
`sides of this position as to this, and I'm going to
`go back to what you originally said. We are only
`going to consider these declarations to the extent
`that they show what happened into -- in the --
`either the reexam or the interference proceeding.
` To the extent that patent owner is
`relying on them more substantively, they'd like to
`show the state of the art or to show that ordinary
`skill would not have had a reasonable expectation of
`success because petitioner has not had an
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`Transcript of Conference Call
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`21
`
`opportunity to cross-examine the declarant we will
`give them -- we will afford them little weight in
`that regard.
` I think that's the fairest way, so patent
`owner can decide whether or not they want to use the
`declarations more substantively. If they do then
`they should offer them for deposition. If they're
`not, if they're just showing what happened in the
`previous proceedings, then patent owner is not
`required to provide them for deposition.
` MS. MAZZOCHI: Thank you, Your Honor.
` JUDGE GREEN: But we will not consider
`them beyond what I just said, which is that we will
`consider them as to what happened in the previous
`proceedings. Petitioners, do you understand, is
`that okay? Petitioner?
` MS. MAZZOCHI: Yes. Thank you, Your
`Honor.
` JUDGE GREEN: Okay. Patent owner?
` MR. GUNTHER: Your Honor, we understand
`the ruling. Thank you.
` JUDGE GREEN: Okay. Let's go on to
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`Transcript of Conference Call
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`22
`
`question two.
` MS. MAZZOCHI: Thank you, Your Honor.
`Again, this is Ms. Mazzochi. So the next issue is
`whether the patent owners will produce the
`transcripts of depositions of Dr. Fiddes, Dr. Gentz
`and Ms. Davis that were taken in IPR2015-01624.
`That was the IPR we had attempted to join. It was
`instituted on the same grounds as the instant IPR.
` Our understanding is that the three
`witnesses who patent owner just recognized have
`filed affidavits here, they submitted the same
`affidavits in that IPR, and we simply want to insure
`that we've got copies of their deposition testimony
`that they gave, number one, to insure that they're
`not taking inconsistent positions in response to
`their declarations there that they do here, what's
`second, to insure that if we streamline these
`depositions and make them shorter we have the
`opportunity to do that.
` I would also like to note that the patent
`owner is relying on Dr. Foote's deposition testimony
`from that Sanofi IPR, and they produced that so
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`Transcript of Conference Call
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`23
`
`we're a little bit baffled why they won't produce
`these deposition transcripts from their same
`affiants here that, you know, that were in the other
`case.
` JUDGE GREEN: Okay. Patent owner, what
`prejudice is there to you to produce these?
` MR. GUNTHER: Your Honor, I don't think
`-- we may have a fight here, and I'm not sure why
`they're baffled. In the meet and confer we told
`them that as part of trying to reach an agreement,
`an overall agreement with them, we'd be willing to
`produce these deposition transcripts from the Sanofi
`proceeding.
` That is the three declarants who are
`common declarants in that proceeding and in this
`proceeding. That's Fiddes, Gentz and Davis. We
`told them we would do that, but we were trying to
`negotiate with them to avoid what we thought was a
`lot of these other things that were litigation style
`discovery as opposed to IPR discovery.
` So, you know, that's not the way that
`petitioner presented it to you, but that's exactly
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`Transcript of Conference Call
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`24
`
`what happened, and if we can -- you know, our view
`is if we can keep this properly confined to IPR
`discovery we're willing to do it.
` JUDGE GREEN: Okay. I don't see any
`reason why those should not be produced in this
`particular IPR. They're the same declarant, same
`issue, same art. They're definitely relevant, so I
`do think they should be produced in the instant IPR.
`Petitioner, anything further on that?
` MS. MAZZOCHI: No, thank you, Your Honor.
` JUDGE GREEN: Patent owner?
` MR. GUNTHER: No, Your Honor. That's
`what we were willing to do.
` JUDGE GREEN: Okay. Great. That one was
`a little bit more quick. Let's go to three.
` MS. MAZZOCHI: Thank you, Your Honor.
`Well, I think, you know, so for number three again
`because we're asking whether they will -- and in
`particular if patent owners choose to present
`Cabilly, Holmes, Heyneker, Riggs and Wetzel, if
`they're going to rely on any declarations from those
`individuals and because they are the inventors,
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`Conducted on February 9, 2017
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`25
`
`again these individuals, it's our understanding they
`were all deposed in connection with a prior section
`146 district court action.
` Again, same issues, same patent. You
`know, and we attempted to see whether we can get
`them from the public record. They appeared to not
`be available in the public record, so again we think
`that whether you want to call it, you know, routine
`discovery or under the Garmin factors it's the same
`witnesses, same subject matter, same invention
`story, same expectation issues, shouldn't be overly
`burdensome for them to produce the deposition
`transcripts.
` We've tried to get them through other
`means and we haven't been able to get it, and again
`deposition transcripts are not going to reveal
`Genentech's litigation positions or strategy for
`this proceeding, so that was our rationale for
`requesting those.
` JUDGE GREEN: Patent owner?
` MR. GUNTHER: Your Honor, this -- these
`we really feel are beyond the pail. I mean, this is
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`26
`
`again now getting into something you might ask in a
`district court litigation, but the fact is that a
`number of these people were deposed in a 146
`proceeding which was an appeal of an interference
`proceeding many years ago that dealt with issues
`like priority of invention and, you know, sort of
`when specific conceptions occurred, when specific
`reductions to practice occurred.
` Your Honor, that's way beyond anything
`that has any relevance to this proceeding. No one
`is challenging the priority date of the 415 patent,
`and the notion that we could get into producing
`transcripts from years ago in a 146 proceeding seems
`to me to be well beyond anything that is appropriate
`in an IPR discovery.
` JUDGE GREEN? Would petitioners like to
`respond?
` MS. MAZZOCHI: Sure. Your Honor, I'd
`like to respond because once again these -- the
`testimony by these individuals may very well be
`offering opinions on the same issues that patent
`owner has put in play in his response.
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`27
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` Again, patent owner is spending pages
`talking about how the art was skeptical and this was
`impossible to do and even though there was
`extraordinary experience weren't able to make things
`work, and they've relied on, you know, secondary
`considerations, but simultaneous invention is
`likewise a secondary consideration that works in our
`favor.
` So, you know, again I think this simply
`gets to the credibility of the issues that patent
`owner itself has put in play with regard to its own
`invention and, you know, again we're not looking to
`go beyond issues that have already been raised.
`We're not looking to do anything new. It's just
`these are existing deposition transcripts about the
`same subject matter.
` JUDGE GREEN: Okay. I understand the
`issue. At this point, you know, what we have here
`is an obviousness rejection, and if patent owner
`says we're not interested in priority of invention
`or anything else, to the extent that there are any
`inconsistent statements patent owner is required
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`under our rules to put those in anyway, and so
`patent owner has to ask themselves if there are
`inconsistent statements then they have to put them
`in.
` But beyond that I don't see any reason
`why those particular transcripts need to come into
`this particular IPR because I do think this IPR is
`much more of a patentability and an obviousness
`determination. Petitioner, any questions?
` MS. MAZZOCHI: No, I understand, Your
`Honor. Thank you.
` JUDGE GREEN: Patent owner?
` MR. GUNTHER: Thank you, Your Honor. We
`understand.
` JUDGE GREEN: Okay. Thank you. Question
`four.
` MS. MAZZOCHI: Yes, Your Honor. So in
`the declarations of Doctors Cabilly, Holmes, Riggs,
`Wetzel, McKnight and Harris those declarations in
`their original form had exhibits attached to them
`and for whatever reason patent owner declined to
`include those original attachments that were in the
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`Transcript of Conference Call
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`29
`
`declarations as filed in the materials submitted
`here.
` So we believe this is routine discovery
`under 42.51 B1, subpart I, that any exhibit cited in
`a paper or in testimony must be served with the
`citing paper or testimony.
` JUDGE GREEN: Now, these are part of --
`these are the exhibits to the original declaration
`that's in the reexam in the interference
`proceedings, correct?
` MS. MAZZOCHI: That is correct.
` JUDGE GREEN: And those are not a matter
`of public record?
` MS. MAZZOCHI: Again, Your Honor, we
`contacted a searc

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