throbber
1
`
`________________________________________________________
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________
`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC,
`Petitioners
`v.
`GENENTECH, INC. AND CITY OF HOPE
`Patent Owners
`U.S. Patent No. 6,331,415
`Appl. No. 07/205,419, filed June 10, 1988
`Issued: Dec. 18, 2001
`Title: Methods of Producing Immunoglobulins, Vectors and
`Transformed Host Cells for Use Therein
`________________________________________________________
`IPR Trial No. IPR2015-01624
`________________________________________________________
`
`VIDEO DEPOSITION of
`REINER GENTZ, Ph.D.
`June 10, 2016
`Miami, Florida
`9:13 a.m.
`
`Reported By:
`Dawn A. Hillier, RMR, CRR, CLR
`Job No: 44667
`
`Mylan/Merck v. Genentech
`IPR2016-00710
`Genentech Exhibit 2140
`
`Mylan v. Genentech
`IPR2016-00710
`Merck Ex. 1115, Pg. 1
`
`

`

`2
`
`APPEARANCES:
`
`ATTORNEYS FOR PLAINTIFF
` MAYER BROWN, LLP
` 1221 Avenue of the Americas
` New York, New York 10020
` 212.506.2500
` BY: RICHARD McCORMICK, ESQ.
` rmccormick@mayerbrown.com
` JONATHAN H. KIM, ESQ.
` jkim@mayerbrown.com
`
`ATTORNEY FOR DEFENDANT
`
` DURIE TANGRI, LLP
` 217 Leidesdorff St.
` San Francisco, California 94111
` BY: ADAM R. BRAUSA, ESQ.
` abrausa@durietangri.com
`
`ALSO PRESENT:
` Larry Coury, Regereron Pharmaceuticals
` Nora Passamaneck, WilmerHale
` Jeff Menton, Videographer
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Merck Ex. 1115, Pg. 2
`
`

`

`3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` INDEX
` PAGE
`WITNESS - REINER GENTZ, Ph.D. 6
`DIRECT EXAMINATION BY MR. McCORMICK 6
`CROSS EXAMINATION BY MR. BRAUSA 191
`REDIRECT EXAMINATION BY MR. McCORMICK 194
`CERTIFICATE OF OATH 198
`REPORTER'S CERTIFICATE 199
` EXHIBITS
`Exhibit 1 Exhibit 2021 in IPR Proceeding, 8
` "Declaration of Reiner Gentz, Ph.D."
`Exhibit 2 Document, "Expert of Reiner 8
` Gentz, Ph.D."
`Premarked Exhibit 2060 39
`Exhibit 3 Stueber Article 79
`Premarked Exhibit 1002 87
`Exhibit 4 Diagram 137
`Exhibit 5 Diagram 152
`Exhibit 6 Diagram 155
`Exhibit 7 Diagram 161
`Exhibit 8 Diagram 164
`
` REPORTER'S KEY TO PUNCTUATION:
` -- At end of question or answer references
` interruption.
` ... References a trail-off by the speaker.
` No testimony omitted.
` "Uh-huh" References an affirmative sound.
` "Huh-uh" References a negative sound.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 3
`
`

`

`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` THE VIDEOGRAPHER: This begins the videotaped
` deposition of Reiner Gentz, Ph.D. Please note the
` microphones are very sensitive. Be aware that they
` can pick up whispering and conversations not
` intended for the record. Additionally, please turn
` off your cell phones or place them away from the
` microphones.
` This video deposition is being taken by
` attorney Richard J. McCormick from the law firm of
` Mayer Brown, LLP, representing the plaintiff in the
` matter of Sanofi-Aventis U.S., LLC, and Regeneron,
` Pharmaceuticals, Inc., plaintiff, versus Genentech,
` Inc., and City of Hope, defendants, and Genentech,
` Inc., and City of Hope, counterclaim plaintiffs,
` versus Sanofi-Aventis U.S., LLC, and Regeneron
` Pharmaceuticals, Inc., counterclaim defendants,
` case number 2:15-cv-05685, in the United States
` District Court for the Central District of
` California, Western Division, and also case number
` IPR2015-01625 before the patent trial and appeal
` board.
` And the style of that case is Sanofi-Aventis
` U.S., LLC, Regeneron Pharmaceuticals, Inc., and
` Genzyme Corporation, petitioners, and versus
` Genentech, Inc., and the City of Hope, patent
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 4
`
`

`

`5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` owners.
` This deposition is being held at the offices
` of Carlton Fields at 100 Southeast Second Street,
` Miami, Florida. Today is June 10th, 2016. The
` time is approximately 9:13 a.m. My name is Jeff
` Menton from David Feldman Worldwide, Inc., and I am
` the certified legal video specialist. The court
` reporter is Dawn Hillier, also in association with
` David Feldman.
` Would counsel please introduce themselves,
` starting with the noticing attorney.
` MR. McCORMICK: Richard --
` THE VIDEOGRAPHER: And then will the court
` reporter please swear the witness in.
` MR. McCORMICK: Okay. Richard McCormick from
` Mayer Brown for Sanofi, Regeneron, and Genzyme.
` And I should just add that the IPR2015-1624 matter
` is a consolidated case.
` MR. KIM: Jonathan Kim for Mayer Brown
` representing the plaintiffs.
` MR. COURY: Larry Coury from Regeneron
` Pharmaceuticals.
` MR. BRAUSA: Adam Brausa from Durie Tangri,
` LLP, on behalf of Genentech, City of Hope, and the
` witness.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 5
`
`

`

`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` MS. PASSAMANECK: Nora Passamaneck from
` WilmerHale.
` REINER GENTZ, Ph.D.,
`was called as a witness, and having first been duly
`sworn, was examined and testified as follows:
` THE WITNESS: Okay. My name is Reiner Gentz.
` I'm from Gentz Biotechnology Consultants in Brazil,
` Belo Horizonte.
` DIRECT EXAMINATION
`BY MR. McCORMICK:
` Q Good morning, Dr. Gentz.
` A Good morning.
` Q As you heard, my name is Richard McCormick. I
`represent Sanofi and Regeneron and Genzyme in this
`matter.
` You now understand that you're now under oath.
`And you're required, as you said, to tell the truth, the
`whole truth, and nothing but the truth?
` A That's correct.
` Q And you will do that today?
` A I do.
` Q Okay. During the course of the day, I'm going
`to be asking you a series of questions. You're under
`oath to answer those questions truthfully. If in the
`first instance you don't understand my question, just
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 6
`
`

`

`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`let me know and I'll try and clarify it for you.
` A Sure.
` Q Okay. If you want to take breaks at any time,
`just let me know. And we'll try and take a break, you
`know, periodically; but if you need one sooner, you'll
`let me know?
` A Okay.
` Q How are your English-language skills?
` A My English is okay. I lived for over ten
`years in the U.S. But I went back to Brazil in 2002, so
`it's quite a while.
` Q Okay.
` A But most companies in Brazil, they have a lot
`of English-speaking people. And most cases, all
`conversations are in English. So I --
` Q Okay.
` A -- am still in shape.
` Q If there's some English-language nuance you
`don't understand, we could also certainly try and
`clarify that as well; okay?
` A Okay.
` Q And I would just say, I'm going to not -- I'm
`going to try not to talk over you as you're giving your
`answers. I would ask you not to talk over me as I'm
`asking questions --
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 7
`
`

`

`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A Sure.
` Q -- because she needs to take everything down.
`And if we talk over each other, it might be difficult
`for her to do that; okay?
` A Yes. All right.
` Q Now, Dr. Gentz, you've prepared some written
`opinions in connection with the lawsuit and the Patent
`and Trademark Office proceedings?
` A Yes.
` Q And those opinions are with respect to the
`Bujard patent?
` A The Bujard patent.
` Q And you understand you're here today to
`testify about those opinions?
` A Yes.
` Q Okay. So let me mark as Gentz 1, I'll just
`identify it by exhibit. It's Exhibit 2021 in the IPR
`proceeding entitled "Declaration of Reiner Gentz, Ph.D."
` (Exhibit 1 was marked.)
` MR. McCORMICK: And then as Gentz 2, in the
` District Court litigation in the Central District
` of California, Sanofi and Regeneron, re: Genentech
` and City of Hope, is a document entitled "Expert
` Report of Reiner Gentz, Ph.D."
` (Exhibit 2 was marked.)
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 8
`
`

`

`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`BY MR. McCORMICK:
` Q And Dr. Gentz, can you confirm that the
`documents that have been put in front of you, Gentz
`Exhibit 1 and Gentz Exhibit 2, are copies of the
`declaration and expert report that you prepared and
`submitted?
` A Okay. Yes.
` Q They are?
` A Yes.
` Q Okay. And do you understand that the document
`that I think is to your left, Exhibit 1, that is a
`document that was submitted to the U.S. Patent and
`Trademark Office --
` A Yeah.
` Q -- in connection -- let me finish. Sorry.
`Because she's going to have hard time taking this down.
` -- that was submitted to the U.S. Patent and
`Trademark Office in connection with what we're calling
`the Cabilly II patent?
` A Yes.
` Q Okay. And you understand that the document to
`your right is an expert report submitted to the Federal
`District Court in California in Los Angeles?
` A Um-hum.
` Q And that's with respect -- that litigation is
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 9
`
`

`

`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`with respect to the Cabilly III patent?
` A Yes. I know.
` Q Okay. And is it fair to say that in both the
`declaration and the report, your opinions are almost
`identical?
` A Yes.
` Q There's some formalities that are different up
`front?
` A In front, some information, yeah.
` Q Okay. I think generally today I'm going to
`refer to Gentz Exhibit 1, if that's okay.
` A Okay.
` Q If you believe at some point there might be
`something different in Gentz 2, will you let me know?
`But I believe them to be identical, at least in
`everything we'll talk about today.
` A Yes.
` Q Now, before signing each of these exhibits --
`and your signature appears somewhere near the end --
`you've had a chance to review them; right?
` A Okay. Yeah.
` Q No. No. No. Before you signed them --
` A Of course. Of course. It's my report.
` Q You reviewed them?
` A Yes. Of course.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 10
`
`

`

`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q Since signing them, have you had another
`chance to review them?
` A Yes.
` Q All right. Do you want to make any changes to
`either of those documents?
` A No, I don't want to.
` Q Okay. Do you know that the litigation, which
`is about Cabilly III, and that's the report that is
`Gentz Exhibit 2, that is scheduled to go to trial at the
`end of September of this year?
` A Not familiar, but...
` Q You did not know that?
` A No.
` Q Okay. Do you have any intention to testify at
`trial in Los Angeles at the end of September?
` A It was not discussed. If it would be
`necessary.
` Q Okay.
` A I have the impression not, but...
` Q All right. With respect to Gentz Exhibit 1,
`which is the proceeding in the Patent and Trademark
`Office, do you understand that today, you're essentially
`giving trial testimony on that -- on that proceeding?
` A Okay. Yes.
` Q You understand that?
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 11
`
`

`

`12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A Um-hum.
` Q Okay. And --
` A I understand.
` Q Okay. Thank you.
` And do you understand that a panel of three
`judges in the Patent and Trademark Office, they're going
`to be considering your testimony today as if you were
`testifying live in front of them?
` A Okay. Yes.
` Q They're going to read the transcript. You
`understand that?
` A Yeah.
` Q Okay. They might even look at the video?
` A Yeah.
` Q All right. They'll consider the substance of
`your testimony in deciding the question that's before
`them?
` A Yes.
` Q Do you understand that?
` A Yes, I understand.
` Q And they'll be judging your credibility as a
`witness?
` A Um-hum. Okay.
` Q Okay?
` A Yeah.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 12
`
`

`

`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q And your credibility's very important to you,
`isn't it?
` A Yeah. I think so.
` Q Okay. Dr. Gentz, have you given any prior
`expert testimony before in any kind of proceeding?
` A About ten years ago, I made a deposition for
`Human Genome Sciences.
` Q Okay. Was that in a lawsuit? A litigation?
` A Yes, it was a litigation.
` Q Do you know who the parties were other than
`Human Genome Sciences?
` A Amgen.
` Q Do you know if it was a patent litigation
`proceeding?
` A It was. The topic was a patent, yeah, brought
`by both parties.
` Q Okay. Do you know where that -- where the
`court was located?
` A It was -- the meeting, the proceeding was in
`Washington, DC.
` Q Okay. The deposition was in Washington. Do
`you know which court was -- was overseeing the lawsuit?
` A No, I don't know.
` Q You don't know. Okay.
` And you were an employee of Human Genome
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 13
`
`

`

`14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Sciences at the time?
` A At the time, no. I left Human Genome Sciences
`in 2002. It was about several years later.
` Q Without getting into any confidential
`information, can you generally tell me what that lawsuit
`was about?
` A It was about ligand and the receptor, organs
`of the TNF receptor family, that same.
` Q Did it involve antibodies?
` A Well, Human Genome Sciences had also made
`antibodies against one of the -- actually, agonistic
`antibodies.
` Q This -- and what year was this about? I'm
`sorry.
` A Hmm?
` Q What year?
` A I would say about 2005, 2006. About ten
`years.
` Q Forgive me for not remembering. Is -- did
`this case have anything to do with Benlysta?
` A No.
` Q Did this case have anything to do with
`Abthrax?
` A No.
` Q Aside from that deposition testimony, have you
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 14
`
`

`

`15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`given any other sworn testimony?
` A No.
` Q No trial testimony?
` A Not one time.
` Q Aside from giving expert testimony -- oh,
`strike that.
` Were you testifying as an expert in this Amgen
`Human Genome Sciences?
` A It was as a former employee.
` Q Okay. Thank you.
` Now, you worked at Roche between 1984 and
`1993?
` A That's correct.
` Q Is that the same Roche that is now the parent
`company of Genentech?
` A [Inaudible.]
` Q That's the same Roche who now owns Genentech?
` A That's correct.
` Q Do you own any stock in Roche?
` A No.
` Q No stock. Did you ever own any stock in
`Roche?
` A Many years when it was Genentech, but no. No,
`not La Roche.
` Q Can you tell me to date how much time you have
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 15
`
`

`

`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`spent working on this matter?
` A It's about 50 hours.
` Q Fifty hours.
` And have you billed all of that time?
` A Have you --
` Q Have you submitted an invoice for that time?
` A I have submitted a partial.
` Q Okay.
` A Have not received anything.
` Q It happens.
` So 50 hours to date as you sit here right now?
` A More or less, yeah. I have not calculated
`now. But it's not much more. It's not high. It's not
`20.
` Q And that's at your ordinary consulting rate
`of, I think it's $400 an hour?
` A That's correct.
` Q Okay.
` A I don't charge different for different
`companies.
` Q Fair enough.
` Dr. Gentz, before being retained in this
`matter, did you have any knowledge of the Cabilly
`patents?
` A I knew that Genentech and City of Hope had
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 16
`
`

`

`17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`patents in this area. But I was not very familiar with
`Cabilly, the name itself.
` Q But you were familiar with the -- you were
`familiar with the existence of the patents at least?
` A Yeah. Okay.
` Q That's a yes?
` A Yes.
` Q Yes. Okay. Do you recall the first time you
`learned of the Cabilly patents?
` A I cannot say for sure.
` Q Let me see if I can refresh your recollection
`a little bit. The first Cabilly patent issued in about
`1988, 1989. Does that help you recall when you might
`have first heard about these patents?
` A Well, roughly. It's likely a little bit
`later, '90, whatever.
` Q Okay. You don't have any specific
`recollection, then?
` A No, don't have.
` Q Before being retained in this matter, had you
`ever read the Cabilly patents?
` A Before? No.
` Q You've read them since, though, in preparation
`for submitting your expert reports?
` A Yes.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 17
`
`

`

`18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q And you have -- have you -- in reaching the
`opinions in your declaration and in your expert report,
`did you form an understanding about what the Cabilly
`patent claims -- Cabilly II and III patent claims cover?
` A I think so, yes.
` Q And can you tell me what that understanding
`is? Let's start with Cabilly II.
` A I think the main claim is to make two antibody
`chain in a singular cell.
` Q Okay. That's with respect to Cabilly II.
` A I think so.
` Q Okay. And any different -- is your
`understanding of the Cabilly III claims any different
`than Cabilly II?
` A Well, I have -- I'm not a lawyer, so I'm not
`very familiar with the claims. So I've read them,
`but...
` Q Okay. So as you sit here right now, you
`don't -- you don't -- you didn't form any distinction in
`your mind about how the Cabilly II claims might differ
`from Cabilly III claims?
` A No.
` Q Did you think about the scope of the claims
`with respect to whether they require assembly of the
`co-expressed heavy and light chains inside of the cell?
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 18
`
`

`

`19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A Well, it can be made inside. It can be made
`outside.
` Q Okay. And so by --
` A It --
` Q Sorry.
` A It can be made in vitro because of chains. I
`mean, it's inclusion bodies, so it can be assembled.
` Q So your understanding of the claims is that
`they would include in vivo assembly of the chains or
`in vitro assembly?
` A Yes.
` Q Is that yes?
` A Yes.
` Q Now, you were at Human Genome Sciences from
`'93 to 2002; correct?
` A Correct.
` Q At that time, you worked on two
`antibody-related projects, at least judging from your
`curriculum vitae. There was the project that eventually
`resulted in Benlysta?
` A Benlysta. Yeah.
` Q And the other project that was in connection
`with the Abthrax antibody?
` A Abthrax antibody. These are some projects
`that didn't go -- they were not approved, like one, what
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 19
`
`

`

`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`I mentioned.
` Q Like the Amgen?
` A The Amgen, yes. So it was in clinic. It was,
`I think, in phase two. It was not there anymore. It
`was stopped.
` Q When you were at Human Genome Sciences, were
`you at that time, so this time frame is '93 to 2002,
`were you aware of the Cabilly II patent?
` A I'm not aware of any name at that time, no.
` Q Okay. Let me try it this way: Were you aware
`of the patent that we're calling the Cabilly II patent?
` A Yes.
` Q You were. You just didn't know it by name?
` A Right.
` Q And do you know at that time whether Human
`Genome Sciences had a license to the patents that we're
`calling the Cabilly II patent?
` A Well, at that time, I don't think they had a
`license.
` Q And at that time, had you formed any opinions
`as to whether or not they needed a license?
` A Well, this was always discussed, if we had
`freedom to operate [inaudible] an object, it was a legal
`argument. It was a task of the legal department to
`resolve this.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 20
`
`

`

`21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q And I don't want to --
` THE COURT REPORTER: Can we go off the record,
` please?
` MR. McCORMICK: Yeah, sure.
` THE COURT REPORTER: Thank you.
` THE VIDEOGRAPHER: Want to go off the record?
` At 9:30 a.m.
` (A discussion is had off the record.)
` THE VIDEOGRAPHER: We're back on the video
` record. The time is 9:31 a.m.
`BY MR. McCORMICK:
` Q Dr. Gentz, I'm sorry. I don't mean to inquire
`into any communications you might have had with the
`lawyers at HGS at the time.
` A Sure.
` Q What I want to ask you is: You were aware at
`that time of the patent that we refer to as the
`Cabilly II patent; that was your testimony?
` A We knew that the patent was out, protecting
`the manufacturing of antibodies.
` Q Okay. Did you personally have an opinion,
`separate and apart from any of the discussions you had
`with the lawyers, that Human Genome Sciences needed a
`license to the Cabilly -- what we're calling the
`Cabilly II patent?
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 21
`
`

`

`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` A Well, I wasn't aware of really when these
`patents were filed. I didn't know that. So I don't
`know that. I would say no, to answer.
` Q You would say no, that you didn't have a
`personal opinion --
` A I didn't --
` Q Let me finish.
` You would say no, that you didn't have a
`personal opinion at that time, whether or not Human
`Genome Sciences needed a license to what we're calling
`the Cabilly II patent?
` A Yeah. We had not -- no opinions at the time.
`We were in the very beginning of the development, no,
`not for antibody.
` Q But you understand at that time that Human
`Genome Sciences did not have a license to the patent?
` A Yes.
` Q Okay. And you didn't believe that you needed
`one?
` A I didn't say that. I didn't know.
` Q Okay.
` A As I said, I had not read the patent itself.
` It was not one of the real hot topics at Human
`Genome Sciences because we had many more little projects
`in development.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 22
`
`

`

`23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q Yeah. Dr. Gentz, can you tell me the
`circumstances under which you were retained in these
`matters by Genentech and City of Hope?
` A Yes. Mr. Brausa, he sent me an email asking
`me if I would be interested to hear more about this
`antibody, about the patent, because he knows from the
`publication that I had, that I had practically identical
`patent.
` MR. McCORMICK: He's going to stop you.
` MR. BRAUSA: Yeah. And I'm going to caution
` you. The initial contact is fine, but I want to
` remind you that communications specifically are
` protected by Federal Rule 26. And so not to reveal
` specific communications we've had leading up to
` the -- leading up to the report.
` THE WITNESS: Yeah. He contact me.
`BY MR. McCORMICK:
` Q Yeah. Do you recall the time frame?
` A It was more or less mid April.
` Q Of this year?
` A Of this year.
` Q In forming the opinions in both your
`declaration and in your expert report, did any of the
`Genentech or City of Hope lawyers provide you with any
`facts or data that you relied on?
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 23
`
`

`

`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` MR. BRAUSA: And I'll caution the witness, you
` can answer that question yes or no.
` THE WITNESS: Concerning literature, yes.
` Nothing else.
`BY MR. McCORMICK:
` Q Okay. They provided you with literature?
` A Um-hum.
` Q Okay. Can you tell me what that literature
`is?
` A Well, it's attached, the last two pages.
` Q Oh, it's the Exhibit B, which is the listed
`materials reviewed?
` A The listed materials. That's it.
` Q Any other facts or data that they provided you
`with?
` A No.
` Q Okay. In forming the opinions in your expert
`report and declaration, were you told by the lawyers for
`Genentech and City of Hope to make any assumptions that
`you ultimately relied on in your declaration?
` A No.
` MR. BRAUSA: I -- okay.
` THE WITNESS: No.
` MR. McCORMICK: I can inquire into that.
` Rule 26, there's three areas: Compensation --
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 24
`
`

`

`25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` MR. BRAUSA: Understood.
` MR. McCORMICK: -- facts and assumptions.
` MR. BRAUSA: Understood.
` MR. McCORMICK: Thank you.
`BY MR. McCORMICK:
` Q So, Dr. Gentz, if I can turn your attention to
`Gentz Exhibit 1, which is the IPR declaration. You're
`there.
` And we're going to -- as I said before, we're
`going to be primarily working through this document
`today.
` A Okay.
` Q If you could focus your attention on your
`paragraph eight. And what you say there is that you
`have been asked to give your views on how a scientist
`with a Ph.D. in molecular biology or a related
`discipline as of April 8, 1983, would have interpreted
`the work done by your group at the Bujard lab as
`disclosed in the Gentz publication in 1981 and in the
`Bujard patent.
` A Yes.
` Q I want to ask you something about that Ph.D.
`that you refer to here who has a degree in molecular
`biology or related discipline; okay?
` A Okay.
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 25
`
`

`

`26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Q Now, you pictured this person in your head as
`you were going through this analysis; right?
` A Um-hum.
` Q And you assumed that they had a certain amount
`of experience and skill sets that they gained during the
`course of their education?
` A Correct.
` Q And in forming your opinions in Gentz
`Exhibit 2, your declaration, did you also assume that
`this person with a Ph.D. in molecular biology, that they
`had any additional experience after the Ph.D.?
` A Well, I don't think that I made any difference
`between a Ph.D. and a Ph.D. with several years of
`experience. I think I included it if the person that
`has experience in the topics that are here in this
`patent.
` Q All right. Let me ask it another way. This
`person, this Ph.D. in molecular biology that you
`pictured in your head --
` A Right.
` Q -- that person, on April 8th, 1983, they're
`reviewing the Bujard patent, let's say; okay?
` A Okay.
` Q As of that date, did you, in your mind,
`picture that person having any post-doctoral experience
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 26
`
`

`

`27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`as of that date?
` MR. BRAUSA: Objection, form.
`BY MR. McCORMICK:
` Q What's your answer?
` A Well, I think in addition, yeah.
` Q How much post-doctoral experience did you --
`did you imagine or picture that they had?
` A At least typically, it might be two years.
` Q Okay. You don't actually say that anywhere in
`your declaration. Is that fair? You don't mention that
`this person has post-doctoral experience?
` A I -- I would have to look at -- I don't know.
` Q You can't tell me right here, sitting here,
`whether or not you mention --
` A I though we had this in -- I thought, yeah.
` Q Yeah.
` A Because it was considered, so...
` Q Okay. But in paragraph eight, when you are
`framing the question that you were asked to give your
`views on, you're just identifying a Ph.D. in molecular
`biology?
` A Well, I identified a Ph.D. with experience in
`that sense, yeah.
` Q So throughout your entire declaration,
`whenever I see the word "Ph.D. in molecular biology in
`
`DAVID FELDMAN WORLDWIDE, INC.
`450 Seventh Avenue - Ste 500, New York, NY 10123 1.800.642.1099
`
`Merck Ex. 1115, Pg. 27
`
`

`

`28
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`April of '83," what you intended was a Ph.D. with a year
`or two of post-doctoral experience?
` A With some additional, three years' experience.
` Q Okay. Now, did you assume that this person,
`this Ph.D. w

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket