Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________________________
`
`MYLAN PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
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`GENENTECH, INC. AND CITY OF HOPE
`Patent Owners.
`
`____________________________________________
`
`Case IPR2016-00710
`Patent 6,331,415
`
`____________________________________________
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`EXPERT DECLARATION OF JOHN FIDDES, PH.D.
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`
`
`
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`
`
`Mylan v. Genentech
`IPR2016-00710
`Genentech Exhibit 2019
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`Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`TABLE OF CONTENTS
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`Page
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`I. 
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`INTRODUCTION AND BACKGROUND .................................................... 1 
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`A.  Qualifications And Experience ............................................................. 2 
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`B. 
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`C. 
`
`Compensation ........................................................................................ 4 
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`Prior Expert Testimony ......................................................................... 4 
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`II. 
`
`LEGAL PRINCIPLES ON OBVIOUSNESS ................................................. 5 
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`III.  BACKGROUND OF THE TECHNOLOGY .................................................. 7 
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`A.  Genes, Proteins And Antibodies ........................................................... 8 
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`B. 
`
`C. 
`
`Antibody Production Techniques As Of April 1983 .......................... 16 
`
`Use of Recombinant Gene Expression To Produce Proteins .............. 18 
`
`1. 
`
`2. 
`
`Basic principles of recombinant gene expression ..................... 18 
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`As of April 1983, only a small number of monomeric
`eukaryotic proteins had been produced recombinantly. ........... 20 
`
`D.  As of April 1983, Insulin Was The Only Multimeric Eukaryotic
`Protein Consisting Of Different Polypeptide Chains Which Had
`Been Produced Recombinantly. .......................................................... 29 
`
`E. 
`
`F. 
`
`In May 1981 (When Bujard Was Filed), The Speculative
`Possibility Of Using Recombinant Techniques To Produce
`Antibodies Was Highly Uncertain And Unpredictable ....................... 38 
`
`Research Involving Antibodies And Recombinant Gene
`Expression Between May 1981 And April 1983 Confirmed The
`Uncertainty And Unpredictability Of Whether Antibodies
`Could Be Produced Recombinantly. ................................................... 41 
`
`G.  As Of April 1983, Highly Acclaimed Scientists Were Still
`Uncertain Whether It Was Even Possible To Make Antibodies
`Using Recombinant Techniques. ........................................................ 46 
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`Declaration of John Fiddes, Ph.D.
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`H.  As Of April 1983, Nobody Had Produced An Antibody
`Recombinantly. .................................................................................... 49 
`
`I. 
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`As Of April 1983, Nobody Had Produced A Multimeric
`Eukaryotic Protein Encoded By More Than One Gene
`Recombinantly In A Single Host Cell. ................................................ 49 
`
`IV.  THE CLAIMS UNDER CONSIDERATION AND THEIR
`INTERPRETATION ..................................................................................... 53 
`
`A. 
`
`B. 
`
`C. 
`
`The Cabilly ’415 Patent ....................................................................... 53 
`
`Summary Of Contested Claims ........................................................... 54 
`
`The Person Of Ordinary Skill In The Art ............................................ 56 
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`V.  OPINIONS REGARDING THE ASSERTED PRIOR ART ........................ 57 
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`A. 
`
`Bujard .................................................................................................. 58 
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`1.  What is the focus of the Bujard reference? ............................... 58 
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`2. 
`
`3. 
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`4. 
`
`5. 
`
`6. 
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`Do the references to “multimers” and “one or more structural
`genes” in Bujard suggest the use of the co-expression of
`multiple, distinct eukaryotic genes of interest in a single host
`cell? ........................................................................................... 63 
`
`Do the references to multiple “stop codons” in Bujard suggest
`the use of the strong promoter/terminator system for the
`expression of multiple, distinct genes in a single host cell? ..... 73 
`
`Does Bujard “at least suggest the coexpression of the heavy and
`light chains” of an immunoglobulin in a “single host cell,” as
`the Board found? ....................................................................... 75 
`
`Does Bujard “teach away from the production of light chains in
`one culture and heavy chains in another, to be combined
`chemically at a stage after their harvest and isolation,” as Dr.
`Foote argues? ............................................................................ 80 
`
`Does the statement in Bujard that the “proteins may be prepared
`as a single unit or as individual subunits and then joined
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`together in appropriate ways” suggest in vivo assembly of a
`multimeric protein encoded by more than one gene in a single
`host cell, as Dr. Foote argues? .................................................. 85 
`
`7. 
`
`Do you agree with the Board’s finding that Bujard is “more
`specific and robust” than the Axel reference? .......................... 87 
`
`B. 
`
`Riggs & Itakura ................................................................................... 88 
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`1.  What is the focus of the Riggs & Itakura reference? ................ 88 
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`2. 
`
`Does the Riggs & Itakura reference address the “same problem”
`as Bujard and would the skilled artisan have had “good reason”
`to combine these two references in April 1983? ...................... 90 
`
`3.  Would inferences gleaned from Riggs & Itakura have provided
`the person of ordinary skill with the motivation to “selectively
`apply the teachings of Bujard to the specific production of
`immunoglobulins” by means of co-expressing both the heavy
`and light chain in a single host cell? ......................................... 92 
`
`4. 
`
`Do you agree with Dr. Foote’s opinion and the Board’s
`preliminary finding that Bujard in combination with Riggs &
`Itakura renders the claimed invention of the Cabilly ’415 patent
`obvious? .................................................................................... 99 
`
`C. 
`
`Southern ............................................................................................. 101 
`
`1.  What is the focus of the Southern reference? ......................... 101 
`
`2. 
`
`Do you agree with Dr. Foote’s opinion that the skilled artisan
`would have been motivated to combine Bujard and Southern
`because “both have as a goal the expression of genes of interest
`in a single transformed host cell, whether by using one (Bujard)
`or two (Southern) vectors”? .................................................... 103 
`
`3.  Would inferences gleaned from Southern have provided the
`person of ordinary skill with the motivation to “selectively
`apply the teachings of Bujard to the specific production of
`immunoglobulins” by means of co-expressing both the heavy
`and light chain in a single host cell? ....................................... 105 
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`Declaration of John Fiddes, Ph.D.
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`4. 
`
`Do you agree with Dr. Foote’s opinion and the Board’s
`preliminary finding that Bujard in combination with Southern
`renders the claimed invention of the Cabilly ’415 patent
`obvious? .................................................................................. 112 
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`I.
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`Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`INTRODUCTION AND BACKGROUND
`1.
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`I, John Fiddes, Ph.D., have been retained by counsel for Genentech,
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`Inc. and City of Hope (collectively, “Patent Owners”) as an expert in this
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`proceeding.
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`2.
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`I understand that, in a September 8, 2016 decision, the Patent Trial and
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`Appeal Board (the “Board”) instituted inter partes review as to claims 1-4, 11, 12,
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`14, 18-20, and 33 of U.S. Patent No. 6,331,415 (“the Cabilly ’415 patent”). I
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`further understand that the references relied upon by the Board in instituting inter
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`partes review (“IPR”) include the Bujard patent (Ex. 1002), the Riggs & Itakura
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`paper (Ex. 1003) and the Southern paper (Ex. 1004). (Paper 13 at 12-15.) I
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`understand that these grounds are the same as those in IPR2015-01624, and that
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`the Board in this proceeding adopted the reasoning from the institution decision in
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`IPR2015-01624. (Paper 13 at 3, 14.) As a result, I cite below to the institution
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`decision from this proceeding (Paper 13) as well as from IPR2015-01624.
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`(IPR2015-01624, Paper 15.)
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`3.
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`I have been asked to review the challenged claims of the Cabilly ’415
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`patent and the references identified in the petition requesting inter partes review,
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`and evaluate whether the cited references alone or in combination render the
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`challenged claims unpatentable. As part of my review I have been asked to
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`evaluate the prior art and scientific accuracy of the observations that the Board
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`made in the decision instituting inter partes review. I also was asked to evaluate
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`certain statements that Dr. Jefferson Foote made in a declaration (Ex. 1006), which
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`was submitted in IPR2015-01624, as well as the declaration of Dr. Kathryn
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`Calame, which adopts the opinions set forth in Dr. Foote’s declaration without
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`further elaboration. (Ex. 1059, Calame Decl. ¶ 16.) Because Dr. Calame adopted
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`Dr. Foote’s statements, I cite below to Dr. Foote’s declaration and his opinions.
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`4. A list of materials I have reviewed in preparation of this Declaration is
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`attached as Exhibit B. I have also relied upon my scientific knowledge as of April
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`1983 when the Cabilly ’415 patent was filed.
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`A. Qualifications And Experience
`5. My background is summarized below and in my curriculum vitae,
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`which includes a list of my publications and patents and is attached as Exhibit A.
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`6.
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`I received a Bachelor of Science degree in Biological Sciences
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`(Molecular Biology) with First Class Honors from the University of Edinburgh in
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`1973. In 1977, I received my Ph.D. in Molecular Biology from Kings College,
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`Cambridge University. My thesis advisor was Dr. Fred Sanger. The title of my
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`thesis was “The Determination of Nucleotide Sequences in Bacteriophage ΦX174
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`DNA.”
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`7.
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`From 1977 to 1980, I was a Postdoctoral Research Fellow at the
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`University of California, San Francisco (“UCSF”), in the laboratory of Dr. Howard
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`Goodman, where I worked on the human growth hormone, human chorionic
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`somatomammotropin and human glycoprotein hormone genes.
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`8. After my post-doc at UCSF, I became a Senior Staff Investigator at
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`Cold Spring Harbor Laboratory (“CSHL”) in Cold Spring Harbor, New York, a
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`position I held until January 1983.
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`9. My research at CSHL focused on the structure, evolution and
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`expression of the human glycoprotein hormone genes, specifically human
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`chorionic gonadotropin and human luteinizing hormone, and on methods of
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`making cDNA libraries suitable for immunological screening of expression
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`products. I was also an instructor at the CSHL Advanced Cloning Course in the
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`summers of 1982-1983.
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`10. Following my academic career, I entered industry and spent over
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`twenty years in drug discovery and development. In January 1983, just shortly
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`before the filing date of the Cabilly ’415 patent, I took a position at California
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`Biotechnology Inc. (later renamed Scios Inc.) in Mountain View, California. The
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`primary interest of this company was in applying recombinant DNA technologies
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`to the production of therapeutically useful proteins.
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`11. Among other things, I was involved in the development of systems for
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`the production of recombinant forms of basic fibroblast growth factor, and the
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`isolation of cDNA and genomic clones for atrial natriuretic peptide, vascular
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`endothelial growth factor variant and heparin-binding, EGF-like growth factor.
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`12. My last industry position was at Genencor International Inc. in Palo
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`Alto, California where I served as Vice President Research, Health Care from 2003
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`to 2005. Since 2005, I have been an independent consultant on biopharmaceutical
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`matters for a variety of companies, and for two non-profit organizations, the
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`California Antiviral Foundation and the Institute for One World Health.
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`13. Based on my academic and early industry experience, I was well
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`aware of the birth of recombinant DNA technology and followed the developments
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`that eventually led to the production of recombinant forms of medically important
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`proteins. This, in my view, is the art to which the Cabilly ’415 patent pertains, and
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`I believe I am well-positioned to understand and address the skills and mindset of a
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`person of ordinary skill in this field circa 1982-1983.
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`B. Compensation
`14.
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`I am being compensated at my normal consulting rate for my work,
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`which is $650 per hour. My compensation is not dependent on and in no way
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`affects the substance of my statements in this Declaration.
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`C.
`15.
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`Prior Expert Testimony
`I provided expert reports and deposition testimony in Bristol-Myers
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`Squibb Co. v. Genentech, Inc. & City of Hope, 2:13-cv-05400-MRP-JEM (C.D.
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`Cal), Eli Lilly & Co. v. Genentech, Inc., 2:13-cv-07248-MRP-JEM (C.D. Cal.), and
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`Sanofi-Aventis U.S. LLC & Regeneron Pharm., Inc. v. Genentech, Inc. & City of
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`Hope, 2:15-cv-05685-GW-AGR (C.D. Cal.). I also provided a declaration and
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`deposition testimony in Sanofi-Aventis U.S. LLC & Regeneron Pharm., Inc. v.
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`Genentech, Inc. & City of Hope, Case IPR2015-01624 (P.T.A.B.).
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`II. LEGAL PRINCIPLES ON OBVIOUSNESS
`16.
`I have been informed and understand that in order to invalidate a
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`patent claim as obvious in the context of an inter partes review, it must be shown
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`by a preponderance of the evidence that the claim would have been obvious to a
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`person of ordinary skill at the time the invention was made. The prior art does not
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`need to render obvious every possible embodiment within the scope of the claim:
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`the prior art renders the claim obvious if the combined teachings disclose an
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`embodiment that is within the scope of the claim.
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`17.
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`I have been informed and understand that factors relevant to the
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`determination of obviousness include the scope and content of the prior art, the
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`level of ordinary skill in the art at the time of the invention, differences between
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`the claimed invention and the prior art and “secondary considerations” or objective
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`evidence of non-obviousness.
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`18.
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`I have been informed and understand that obviousness can be
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`established by combining or modifying the teachings of the prior art to produce the
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`claimed invention where there is some teaching, suggestion or motivation to do so;
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`and that a reasonable expectation of success in achieving the subject matter of the
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`claim at issue must also be shown. Further, I have been informed and understand
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`that the teaching, suggestion or motivation test is flexible and that an explicit
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`suggestion to combine the prior art is not necessary – the motivation to combine
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`may be implicit and may be found in the knowledge of one of ordinary skill in the
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`art, from the nature of the problem to be solved, market demand or common sense.
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`19.
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`I have been informed and understand that a patent claim composed of
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`several limitations is not obvious merely because each limitation was
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`independently known in the prior art. Hindsight reasoning is not an appropriate
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`basis for combining references to form an obviousness combination. I also have
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`been informed and understand that it can be important to identify a reason that
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`would have prompted a person of ordinary skill in the relevant field to combine the
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`limitations in the way the claimed new invention does.
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`20.
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`In undertaking an obviousness analysis, I have been informed and
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`understand that I may take into account the inferences and creative steps that a
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`person of ordinary skill would have employed in reviewing the prior art at the time
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`of the invention. If the claimed invention combines elements known in the prior
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`art and the combination yields results that would have been predictable to a person
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`of ordinary skill at the time of the invention, then this evidence would make it
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`more likely that the claim was obvious.
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`21.
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`I have also been informed and understand that obviousness may be
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`established if the combination of prior art elements was obvious to try, even if no
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`one attempted the combination. For a combination to be obvious to try, however, a
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`solution must be among a finite number of identified, predictable solutions. Where
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`the art is uncertain or unpredictable, a person of ordinary skill in the art will not
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`have a reasonable expectation of success.
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`22.
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`I have been informed and understand that an obviousness analysis
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`must take into account any “secondary considerations” or, as they are sometimes
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`called, objective indicia of non-obviousness. These secondary considerations can
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`include the invention’s commercial success, long-felt but unresolved needs,
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`licenses showing industry respect, the failure of others, skepticism by experts,
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`praise by others, teaching away by others, recognition of a problem and copying of
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`the invention by competitors. Such secondary considerations, when present, offer
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`objective information as to the state of the art at the time of the invention and
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`provide a check to hindsight analysis.
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`III. BACKGROUND OF THE TECHNOLOGY
`23. To place the importance and innovation of the Cabilly ’415 patent into
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`context, I have been asked to provide some background on the relevant technology.
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`Declaration of John Fiddes, Ph.D.
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`A. Genes, Proteins And Antibodies
`24. A deoxyribonucleic acid (DNA) molecule encodes the genetic
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`instructions that a living organism uses for a wide variety of critical functions.
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`Sequences of DNA nucleotides are organized into discrete structures, called genes,
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`which a cell’s machinery “reads” to make proteins. Proteins, comprised of a string
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`of units called amino acids, are biomolecules that perform many of the functions of
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`cells and organisms.
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`25. The basic process of making a protein from a gene is called “gene
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`expression.” First, the cell copies the gene of interest (a DNA sequence) into
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`messenger ribonucleic acid (mRNA) via a process called transcription. Second,
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`the mRNA is converted into the corresponding sequence of amino acids (called a
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`polypeptide) via a process called translation. Finally, the translated polypeptide
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`undergoes folding and possibly post-translational modifications to assemble as the
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`active protein structure.
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`26. This step-wise process is reflected in the following illustration:
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`Declaration of John Fiddes, Ph.D.
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`(Ex. 2081, Bruce Alberts et al., Essential Cell Biology, Chapter 1 (3rd ed. 2009).)
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`27. Transcription: In transcription, an enzyme in cells called RNA
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`polymerase synthesizes single-stranded mRNA in a linear fashion from the
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`doubled-stranded genomic DNA template.
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`28. Translation: In translation, complex structures in cells called
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`ribosomes bind to specific sites on the mRNA transcript and translate the mRNA
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`sequence into a polypeptide chain of amino acids. The mRNA sequence is read
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`three nucleotides at a time, with each triplet of nucleotides – called a codon –
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`specifying one amino acid. A start codon initiates translation, and stop codons
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`signal termination of translation. Codons, therefore, provide the information that
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`dictates the order and arrangement of amino acids in a polypeptide chain, and
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`when the formation of the chain begins and ends.
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`29. An exemplary coding region (from protein B of bacteriophage G4) is
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`shown in the table below (see Ex. 2082, G. N. Godson et al., Nucleotide Sequence
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`of Bacteriophage G4 DNA, Nature 276:236-47 (1978)):
`
`TAC
`Codon
`Amino Acid TYR
`
`GGA
`GLY
`
`TAT
`TYR
`
`TTC
`PHE
`
`TGA
`STOP
`
`TGA
`STOP
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`30. As seen in this table above, multiple stop codons (written for ease of
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`reference as DNA as opposed to mRNA) can signal the end of translation of a
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`single polypeptide. A coding region may end with multiple stop codons to ensure
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`termination of translation. A start codon would be found upstream of the region
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`shown above.
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`31. Depending on where translation begins, each mRNA sequence can be
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`translated in any one of several “reading frames,” i.e., the various ways in which
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`the sequence may be divided into sets of nucleotide triplets.
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`32. Folding: As part of the process of translation, the polypeptide chain
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`folds to take on its final structure and to become an assembled, active protein.
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`Folding allows the polypeptide to form its three dimensional structure and occurs
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`as amino acids within a polypeptide chain interact with one another. Disulfide
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`bonds or bridges (which are covalent bonds formed between cysteine amino acids)
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`form a scaffolding that helps maintain a protein’s proper three dimensional
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`structure. (Disulfide bonds may also be referred to as S-S bonds.) Such
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`scaffolding may be present in both simple and more complex proteins, and where
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`present is essential to the activity of a protein.
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`33. Post-translational Modification: This generally refers to processes by
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`which cells may modify a polypeptide after it has been produced to achieve a
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`mature product, and can include any number of processes.
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`34. Monomeric and Multimeric Proteins: The most simple proteins are
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`monomeric, meaning they are formed by only a single polypeptide chain. Other
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`proteins exist as a complex of multiple polypeptide chains called “multimeric
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`proteins.” Multimeric proteins can be made up of multiple identical polypeptide
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`chains or a combination of different polypeptide chains. For multimeric proteins,
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`amino acid interactions between individual chains and disulfide bonding between
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`individual chains are critical to correct folding.
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`35.
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`Insulin: There are many different types of multimeric proteins formed
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`from more than one type of polypeptide chain. One example is insulin, which is a
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`relatively simple and small (i.e., ~ 5,800 Daltons) multimeric protein. (A Dalton is
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`a standard unit of measurement used to characterize the mass of a protein.) The
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`insulin molecule contains two different polypeptide chains – an “A” chain
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`consisting of 21 amino acids and a “B” chain consisting of 30 amino acids – that
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`are chemically attached via two inter-chain disulfide (S-S) bonds.
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`36. The relatively simple configuration of the insulin protein (including its
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`disulfide bonding scheme) is shown in the illustration below:
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`(Ex. 2083, Protein Structure, Boundless,
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`https://www.boundless.com/biology/textbooks/boundless-biology-
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`textbook/biological-macromolecules-3/proteins-56/protein-structure-304-11437/.
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`
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`(last visited Dec. 17, 2016).)
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`37. As can be seen above, the two chains that comprise insulin are joined
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`together by two inter-chain disulfide bonds; there is also one intra-chain disulfide
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`bond.
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`38. Antibodies: Antibodies, also known as immunoglobulins, are large
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`tetrameric proteins (which may form even larger complexes) that are expressed and
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`secreted by B cells (a type of white blood cell made in the bone marrow). There
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`are five classes of antibodies (IgG, IgD, IgE, IgA, and IgM), each of which is
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`further divided into multiple different types called isotypes.
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`39. A naturally occurring tetrameric antibody is composed of four
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`polypeptide chains – two identical “heavy” chains (or “H” chains) and two
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`identical “light” chains (or “L” chains). The heavy and light chains differ in their
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`size, and thus, their respective molecular weights. By way of example, in
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`antibodies of the immunoglobulin G (“IgG1”) class, the longer H chains are
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`naturally comprised of about 450 amino acids and each have a molecular weight of
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`about 50,000 Daltons, whereas the shorter L chains are naturally comprised of
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`about 212 amino acids and each have a molecular weight of about 25,000 Daltons.
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`40. The heavy and light chains of an antibody form what is often depicted
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`schematically as a Y-shaped molecule via multiple intra- and inter-chain disulfide
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`bonds. For example, in the case of an antibody of the IgG1 class, there are 12
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`intra-chain disulfide bonds and 4 inter-chain disulfide bonds that together provide
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`inter- and intra-chain “scaffolding” within the structure of an antibody, as
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`discussed above.
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`41. The below figure (taken from FIG. 1 of the Cabilly ’415 patent)
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`provides a representation of an antibody’s Y-shape and how the various heavy and
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`light chains assemble via disulfide bonds to form a functional antibody:
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`42. As shown above, both the heavy and light chains have a “constant”
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`region and a “variable” region. The “constant” regions may be the same between
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`different types of antibodies. By contrast, the “variable” regions differ from one
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`individual antibody to the next; these variable regions are responsible for
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`identifying and binding to a particular antigen (i.e., a substance that causes the
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`immune system of an organism to generate antibodies that bind the antigen in order
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`to provoke an immune response).
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`43.
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`In sum, an antibody is a much larger and more complex protein than
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`insulin (and most other proteins). The molecular weight of a typical antibody is
`
`approximately 150,000 Daltons, or more than 25 times the size of insulin. Further,
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`the three-dimensional shape of an antibody is more complex and requires much
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`more post-translational processing.
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`44. The table below provides a to-scale comparison that illustrates the
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`Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`relative size of insulin compared to an antibody.
`
`Insulin
`dimer (ab)
`
`
`Immunoglobulin G
`tetramer (a2b2)
`
`
`Structure
`
`
`
`Size
`
`
`
`
`1324 amino acids
`150,000 Daltons
`
`16
`
`
`51 amino acids
`5,800 Daltons
`
`
`
` 3
`
`Disulfide
`Bonds
`
`
`45. At my request, the space-filling models in the above figure were
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`generated by scientists at Genentech using PyMOL software (available for
`
`download at https://www.pymol.org/). Each sphere represents an atom, with gray
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`representing carbon, red representing oxygen, blue representing nitrogen, yellow
`
`representing sulfur, and green representing zinc. The size difference between
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`insulin and an antibody represented above is consistent with my general
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`understanding regarding the relative overall shape and size of each. (See also Ex.
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`Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`2084, RCSB Protein Databank, Molecular Machinery: A Tour of the Protein Data
`
`Bank, http://cdn.rcsb.org/pdb101/learn/resources/2014-mol-mach-poster.pdf (last
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`visited Dec. 17, 2016) (illustrating the diversity of proteins, with an antibody
`
`shown as protein 13 and insulin as protein 16).)
`
`B. Antibody Production Techniques As Of April 1983
`46. Polyclonal Antibodies: As of April 1983, it was well known that
`
`antibodies could be produced by immunizing an animal with a foreign antigen, and
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`then recovering the antibodies that had been produced by the animal. Under this
`
`approach, a “polyclonal” serum is generated, i.e., a mixture of antibodies with
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`varying specificities.
`
`47. As of April 1983, polyclonal antibodies were being widely used to
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`study the structure and function of antibodies. Due to their varying specificities,
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`however, polyclonal antibodies had limited usefulness for therapeutic and non-
`
`therapeutic applications. (Ex. 1001 at 1:51-63, 2:40-43.)
`
`48. Hybridomas: In the 1970s, Drs. Georges Köhler and César Milstein
`
`pioneered a technique for producing “monoclonal” antibodies, i.e., antibodies that
`
`have the same amino acid sequence and bind to the same location on the antigen
`
`(called an epitope) in the same way. Their technique involved the use of fused
`
`cells known as “hybridomas.” (See Ex. 2013, G. Kohler & C. Milstein,
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`Continuous Cultures of Fused Cells Secreting Antibody of Predefined Specificity,
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`Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`Nature 256:495-497 (Aug. 7, 1975).)
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`49. Like the production of polyclonal antibodies, the production of a
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`hybridoma starts with the immunization of an animal with a particular antigen of
`
`interest. B cells from the animal are then isolated and fused to an immortalized
`
`cell, called a myeloma, which are blood cell-derived cancer cells that have the
`
`ability to grow indefinitely in a cell culture. The fused cells, i.e., hybridomas,
`
`grow continuously in culture and produce the desired antibody.
`
`50.
`
`In the early 1980s, the hybridoma technique was being widely used to
`
`produce monoclonal antibodies, and researchers were focusing on expanding their
`
`use even further. (Ex. 1039, Milstein, Monoclonal Antibodies from Hybrid
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`Myelomas, Proceedings of the Royal Society of London, 211:393-412, 407 (1981)
`
`(“use of hybrid myelomas to define the complete repertoire of antibodies to single
`
`antigens . . . is now expanding very rapidly” and “many commercial companies are
`
`beginning to market them”); Ex. 2020, Foote Dep. 37, 48 (describing hybridoma
`
`technique as a “very big” deal in the early 1980s due to “significant
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`achievements”); Ex. 1001 at 1:64-2:11.)
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`Case No. IPR2016-00710
`Declaration of John Fiddes, Ph.D.
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`C. Use of Recombinant Gene Expression To Produce Proteins
`1.
`Basic principles of recombinant gene expression
`51. Recombinant gene expression is a method that allows for the
`
`production and isolation of a protein of interest in a foreign, i.e., “heterologous”
`
`host organism, usually a cell or “host cell.”
`
`52. As explained in the Cabilly ’415 patent, this process involves four
`
`fundamental steps: (1) identification and isolation of a particular gene of interest
`
`(Ex. 1001 at 4:10-12), (2) insertion of that DNA sequence into a vector or plasmid
`
`(id. at 4:17-21), (3) insertion of that vector or plasmid into a suitable host cell (id.
`
`at 4:20), and (4) expression of the sequence, i.e., transcribing the gene of interest
`
`into mRNA, and then translating the mRNA into a polypeptide, by the host cell.
`
`(Id. at 4:23-29.) Host cells transformed with the vector are grown in culture to
`
`express the gene of interest in high quantities and the resulting protein is then
`
`isolated. (Id. at 4:21-24.)
`
`53. Vectors: A vector, comprised of DNA, includes a number of
`
`components to assist with the insertion and expression of the DNA sequence of
`
`interest. For example, a vector will generally include a number of “restriction
`
`enzyme sites,” which are locations in DNA that can be cut by certain proteins
`
`known as restriction enzymes. Restriction enzyme sites allow for the insertion of
`
`the DNA sequence of interest into the vector. (E.g., Ex. 2085, Vectors: A survey
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`
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`of molecular cloning vectors and their uses, Chapter 1: The Plasmid pBR322,
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`Rodriguez, R.L. and Denhardt, D.T. eds. 1988).)
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`54. Promoters/Terminators: A vector also includes regulatory sequences
`
`such as promoters and terminators to signal the initiation and termination of
`
`transcription. (Ex. 1001 at 8:57-9:15, 9:56-10:3.) A promoter is a specific DNA
`
`sequence that signals where RNA polymerase should bind the template DNA and
`
`where mRNA synthesis should begin. A transcription terminator is a specific
`
`DNA sequence that signals where mRNA synthesis should end.
`
`55. Markers: A vector or plasmid will also often include a “marker” (also
`
`called a “marker gene”) that allows for