PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 1
`UNITED STATES PATENT AND TRAD1RK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PRAXAIR DISTRIBUTION.
`
`INC.
`
`Petitioner
`v .
`
`INO THHRAPEUTICS . LLC 1
`Patent Owner
`Case IPR2015-00529
`
`0.8. Patent No. 8.846.112 B2
`
`1
`
`2
`3
`4
`
`5
`6
`
`7
`8
`9
`
`10
`11
`
`The deposition ot OPP!!! L. ROSINTHAL,
`12
`ll.D., Ph.D., was held on Tuesday, January 5. 2016,
`13
`14 calnencing at 9:30 a.n., at the Law Otticei of Lathan
`15
`and Watkins, 555 Eleventh Street, NJI. , Suite 1000,
`
`16 Iashington, D.C. 20004, hetore Steven Poulakos, RPR,
`17 Notary Public.
`18
`19
`
`2 0
`2 1
`22
`23
`24
`
`25
`
`REPORTED BY: Steven Poulalton, RP]!
`
`Page 2
`
`INC.
`
`1 APPRARANC33 :
`2
`3
`4
`5
`6
`7
`8
`9
`
`ON BEHALF OF PRAXAIR DISTRIBUTION,
`SARA H. . ESQUIRE
`“L °"‘°'
`°n° Perk 1'1"‘
`'1"°“”‘ "1°°'
`Irvine . California 92614
`'1'°1°Ph°"°=
`949-353-°9°°
`
`Email : Sara . kerranefiklgatel . can
`
`ON Bun“? °P mo Pmmucxmxcnm ' LLC ‘
`KENNB'1'H G. SCHUI-ER. 38001!!!
`“RC 103153: 3399193
`Iaathllll E Wltkinl: HEP
`330 North Iabanh Avenue
`Suite 2800
`
`Chicago. Illinois 60611
`Telephone:
`312.876.7700
`Email : Kenneth. echulerfllv. con
`Hero . zubiclrfllv. can
`
`10
`11
`
`12
`13
`14
`15
`16
`17
`
`18
`19
`20
`2 1
`22
`23
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 3
`
`INDEX
`
`Deposition of GEOFFREY L. ROSRIITEAL, I.D. , Ph.D.
`January 5 . 2016
`
`1
`
`2
`3
`4
`
`Page
`4
`
`160
`
`Page 4
`
`5 Examination By:
`6
`In . Kerrane
`
`7
`8
`9
`
`10
`11
`
`12
`13
`14
`15
`
`16
`17
`18
`19
`
`2 0
`21
`22
`23
`24
`
`25
`
`1
`:
`
`Ir . Schuler
`
`P R O C E E D I N G S
`_ _ _
`
`3. mH L. ROSENTHAL, M_D_, P1111,
`6
`called as a witness, having been first duly sworn to
`7
`tell the mm the whole truth, and nothing but the
`8
`tmfll’ was examined and testified as follows:
`9
`MS. KERRANE: Sa1aKemmeonbehalfof
`
`10
`11
`
`pefifionas’ pmxail. Distribution, Inc_
`MR. SCHULER: Ken Schuler fiom Latham &
`
`12 Watkins, on behalf of the witness and the respondent.
`13
`MR. ZUBICK: Marc zubick, also with Latham
`14 & Watkins, on behalfof the witness and respondent.
`15
`MR. GOETZZ Ken Goelz onbehalfof
`16 Mallinclcrodt
`17
`EXAMINATION BY MS. KERRANE
`
`18
`19
`20
`21
`22
`23
`
`Good morning, Dr. Rosenthal.
`Q
`A Good morning.
`Q
`Could 370“ Please 5tate Your full name for
`the meme?
`A My name is Jeffrey Lynn Rosenthal.
`Q
`Couldyouplease stateyouraddressforthe
`
`24 ALSO muasnrr : Kenneth 1). coat: , Require .
`25
`counsel for llnllinckrodt Pharmaceuticals
`
`In-house 24
`25
`
`1'°C°Td'-’
`A 1024 Rusfling 03'“ Drwea hfinersviuev
`
`Barkley Court Reporters
`
`(1) Pages 1 — 4
`
`001
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 5
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 7
`
` 1 Maryland.
` 2 Q Thank you.
` 3 Have you ever been deposed before,
` 4 Dr Rosenthal?
` 5 A I have been deposed previously.
` 6 Q And what circumstances was that?
` 7 A I was deposed in a case related to a
` 8 hostile work environment charge.
` 9 Q Okay. And other than that incident, have
`10 you ever been deposed?
`11 A That's the only deposition that I've had.
`12 Q Have you ever testified at trial?
`13 A I have testified at trial once previously.
`14 Q Okay. And what were the circumstances for
`15 that?
`16 A I was an expert witness. I was the
`17 treating physician in a sexual assault case.
`18 Q And what aspects of medicine were you -- if
`19 you can, what aspects of medicine were you providing
`20 expert testimony on?
`21 A I was asked to review the medical
`22 documentation from an emergency room visit for the
`23 subject, for the patient, and testify as to my physical
`24 exam findings.
`25 Q And other than those two experiences, have
`
` 1 you ever been asked to provide live testimony in any
` 2 circumstances?
` 3 A I have not.
` 4 Q I'm going to go over a few ground rules
` 5 with you, which you may already be familiar with.
` 6 First, obviously, I'm going to be asking
` 7 you a series of questions. If you could please wait
` 8 until my question is done before you provide the
` 9 answer. Also, if you could please make sure your
`10 answers are all verbal answers so the court reporter is
`11 able to write them down. If there's any questions that
`12 you don't understand, please let me know so that I can
`13 make sure to rephrase them for you and so that we can
`14 make sure that the answers you're providing are
`15 truthful answers and accurate.
`16 If you need a break at any time, please let
`17 me know, and we can do that, but I ask that you first
`18 answer any pending questions that may be presented
`19 before you request a break.
`20 Do you have any questions?
`21 A I don't. I understand what you've just
`22 said.
`23 Q Great.
`24 And, also, do you understand that on any of
`25 the breaks, if you discuss any subject matter that
`
` 1 is -- pertains to this particular deposition, I can ask
` 2 you about it and you would have to answer it?
` 3 A Yes, I understand that. I've been
` 4 instructed by counsel to not speak about any matters
` 5 that are being discussed today during any of the
` 6 breaks.
` 7 Q Okay. Great.
` 8 Is there any reason that you can't testify
` 9 today?
`10 A No.
`11 Q And is there any medications or anything
`12 that you take now that would affect your testimony?
`13 A No.
`14 Q Now, have you ever provided a report or a
`15 declaration in any legal proceeding before this one?
`16 A No.
`17 Q Okay. And have you ever been a consultant
`18 or an expert witness, other than the one that you just
`19 mentioned, in the medical case, for any legal
`20 proceeding?
`21 MR. SCHULER: Let me just say, I don't
`22 represent you in any of those other matters, but to the
`23 extent that you have confidentiality agreements with
`24 any third party, I just remind you to think about
`25 those.
`
`Page 6
`
`Page 8
`
` 1 THE WITNESS: Thank you.
` 2 I have provided expert review in medical
` 3 malpractice cases infrequently in my time.
` 4 BY MS. KERRANE:
` 5 Q Okay. And have those been in conjunction
` 6 with attorneys?
` 7 A I've worked with -- I've been asked to
` 8 provide expert review by attorneys representing one
` 9 side or the other.
`10 Q And have you ever been involved in a patent
`11 dispute?
`12 A No, I have not.
`13 Q Have you ever been paid to evaluate or
`14 opine on a patent before?
`15 A Before the '112 patent?
`16 Q Before any patents relating to this
`17 proceeding.
`18 A No.
`19 Q Okay. Before this proceeding, had you ever
`20 read a patent?
`21 A I'm sorry, your question?
`22 Q Before this proceeding, had you ever read a
`23 patent before?
`24 A Yes, I had.
`25 Q And in what circumstances did you read a
`
`Min-U-Script®
`
`Barkley Court Reporters
`
`(2) Pages 5 - 8
`
`002
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 9
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 11
`
` 1 patent?
` 2 A I have read a number of patents previously,
` 3 related to invention interests of people in my family
` 4 and some related to colleagues at work.
` 5 Q Are you a named inventor on any patents?
` 6 A I am not.
` 7 Q When were you first retained for this
` 8 matter?
` 9 A I was first retained perhaps 11, 10 or 11
`10 months ago.
`11 Q Okay.
`12 A By the law firm Fitzpatrick.
`13 Q And do you recall who contacted you?
`14 MR. SCHULER: And let me counsel you that
`15 whenever you're answering questions about contact with
`16 attorneys for carrying a --
`17 (Reporter clarifies.)
`18 MR. SCHULER: You can identify the person,
`19 et cetera, but don't divulge the contents of any
`20 communications.
`21 THE WITNESS: Okay. So the person who I
`22 spoke most frequently with was Melinda Roberts.
`23 BY MS. KERRANE:
`24 Q Okay. And do you understand why you're
`25 here today?
`
` 1 A Yes, I do.
` 2 Q I see in front of you, you have what looks
` 3 like a copy of your declaration that you provided in
` 4 this case; is that correct?
` 5 A Yes, that's correct.
` 6 Q And is that something that you just walked
` 7 in with?
` 8 A Yes, I just walked in with it.
` 9 Q Do you have any notations on that?
`10 A I have no notations on this document.
`11 Q But I see that you've folded some pages
`12 over.
`13 A I folded pages over that correspond to the
`14 major headings in the table of contents.
`15 Q Kind of as a road map for yourself?
`16 A Well, just to -- so I'm not fumbling
`17 around.
`18 Q What did you do to prepare for this
`19 deposition?
`20 MR. SCHULER: And, again, you can describe
`21 actions you took, but don't divulge the contents or
`22 communications with anyone.
`23 THE WITNESS: I reviewed information
`24 related to the patent, and I discussed elements of the
`25 declaration with counsel.
`
` 1 BY MS. KERRANE:
` 2 Q How many days did you meet with your
` 3 counsel?
` 4 A I don't know the exact number of days that
` 5 I met with counsel. A handful of times, perhaps.
` 6 Q All in preparation for this deposition?
` 7 A In one way or another, yes, all in
` 8 preparation for the deposition.
` 9 Q What attorneys did you meet with?
`10 A I primarily met with Marc Zubick.
`11 Q And how long would you say you spent
`12 preparing for this deposition?
`13 A Roughly 200 hours, perhaps, in terms -- if
`14 we include review of documents and other information
`15 that's relevant to the declaration.
`16 Q Does that include the time you spent
`17 preparing the declaration?
`18 A Yes, it does.
`19 Q And how long did you spend specifically
`20 after submitting the declaration and preparing for just
`21 the deposition?
`22 A I'm not sure exactly. Maybe half that
`23 time. So maybe a hundred hours.
`24 Q Did you discuss the deposition with anyone
`25 other than your attorneys?
`
`Page 10
`
`Page 12
`
` 1 A No, I've not.
` 2 Q Did you review any documents while
` 3 preparing for your deposition?
` 4 A Yes, I did.
` 5 Q Other than your report, do you recall what
` 6 documents you reviewed?
` 7 MR. SCHULER: Object to the form.
` 8 You mean his declaration?
` 9 MS. KERRANE: I'm sorry, declaration.
`10 THE WITNESS: I believe -- the answer to
`11 your question is, yes, I have reviewed other documents
`12 in addition to the declaration, and those things that
`13 I've reviewed appear in paragraph 16 in my declaration.
`14 BY MS. KERRANE:
`15 Q Let's look at that paragraph real quick.
`16 MR. SCHULER: You're just going to use
`17 Exhibit 2020.
`18 MS. KERRANE: They're the same exhibits,
`19 yes.
`20 BY MS. KERRANE:
`21 Q Exhibit 2020 is your declaration, correct?
`22 A Yes, that's the label on the bottom right
`23 corner of the document.
`24 Q And I believe you referred to paragraph 16
`25 in your report; is that correct?
`
`Min-U-Script®
`
`Barkley Court Reporters
`
`(3) Pages 9 - 12
`
`003
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 13
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 15
`
` 1 A Yes, that's correct.
` 2 Q So in this paragraph, I see that you
` 3 mention that you've reviewed the claims of the '112
` 4 patent, file history, prior art exhibits that were part
` 5 of the petition, documents cited by Dr. Beghetti.
` 6 Is there anything else?
` 7 MR. SCHULER: Objection. The document
` 8 speaks for itself.
` 9 THE WITNESS: I believe that paragraph 16
`10 correctly describes the documents that I reviewed.
`11 BY MS. KERRANE:
`12 Q Did you review Dr. Beghetti's declaration?
`13 A Yes, I did.
`14 Q Okay. And did you review the petition for
`15 inter partes review for the '112 patent?
`16 A Yes, I did.
`17 Q Did you review either patent owner's
`18 preliminary response or its response in this
`19 proceeding?
`20 MR. SCHULER: Object to form.
`21 THE WITNESS: Can you help me by
`22 distinguishing between the either/ors? I did review
`23 the -- I did review the PTAB decision institute, IPR.
`24 Is that what you were asking?
`25 BY MS. KERRANE:
`
` 1 Q No, but that was my next question.
` 2 So you did review the decision to
` 3 institute, correct?
` 4 A Correct.
` 5 Q And the patent owner, which would be INO
` 6 Therapeutics, also submitted two documents.
` 7 Did you review either of those two
` 8 documents?
` 9 A It's not clear to me which documents you're
`10 referring.
`11 Q Did you review any documents submitted by
`12 patent owner in this proceeding?
`13 A I have, yes.
`14 Q And do you recall when you did that?
`15 A It would have been in early November.
`16 Q And do you know if you have seen a final
`17 version of that document as it was filed with the PTAB?
`18 MR. SCHULER: Object to the form.
`19 THE WITNESS: Again, the document to which
`20 you are referring is which?
`21 BY MS. KERRANE:
`22 Q You mentioned that you looked at a document
`23 in early November; is that correct.
`24 A Yes.
`25 Q And is that a document that was being
`
` 1 prepared at the time you were preparing your
` 2 declaration?
` 3 A Yes, it was.
` 4 MR. SCHULER: Object to the form.
` 5 Just make sure to give me time to object.
` 6 THE WITNESS: Okay.
` 7 BY MS. KERRANE:
` 8 Q And my question to you is: Do you know if
` 9 you have seen a final version of that document as it
`10 was filed with the PTAB?
`11 A I believe that the version that I saw was a
`12 final version, yes.
`13 Q I see in paragraph 17, you mention that you
`14 are being compensated for this proceeding; is that
`15 correct?
`16 A That is correct.
`17 Q And do you own any shares in Ikaria?
`18 A I do not.
`19 Q In Mallinckrodt?
`20 A I do not.
`21 Q Or INO Therapeutics?
`22 A Again, I do not.
`23 Q Does your payment in this matter depend, in
`24 any way, on the results of the proceeding?
`25 A No, it does not.
`
`Page 14
`
`Page 16
`
` 1 Q Prior to being retained in this matter, did
` 2 you have any relationship with Ikaria?
` 3 A No.
` 4 Q Okay. Were you using products from Ikaria?
` 5 A Yes. I have used inhaled nitric oxide in
` 6 my clinical practice.
` 7 Q Has Ikaria ever provided you with grants?
` 8 A It has not.
` 9 Q Has Ikaria ever hired you or asked you to
`10 speak at any function?
`11 MR. SCHULER: Object to the form.
`12 THE WITNESS: It has not.
`13 BY MS. KERRANE:
`14 Q Prior to this litigation, did you have any
`15 relationship with INO Therapeutics?
`16 A I have not, no.
`17 Q And prior to this proceeding, did you have
`18 any relationships with Mallinckrodt Pharmaceuticals?
`19 A I have not.
`20 Q Have you ever been involved in any studies
`21 that were sponsored by Ikaria, INO Therapeutics, or
`22 Mallinckrodt?
`23 MR. SCHULER: Object to the form.
`24 THE WITNESS: Could you be more specific
`25 about what you mean by having been involved?
`
`Min-U-Script®
`
`Barkley Court Reporters
`
`(4) Pages 13 - 16
`
`004
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 17
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 19
`
` 1 BY MS. KERRANE:
` 2 Q Okay. What does that mean to you?
` 3 A Well, the reason I asked the question is
` 4 because I'm not -- there are a number of different
` 5 possible meanings for that, and I'm trying to
` 6 understand your question.
` 7 Q Okay. Have you been -- have you
` 8 participated in any studies sponsored by Ikaria, INO
` 9 Therapeutics, or Mallinckrodt?
`10 MR. SCHULER: Object to the form.
`11 THE WITNESS: May I ask you a question?
`12 BY MS. KERRANE:
`13 Q Sure.
`14 A Are you asking whether I've ever been a
`15 principal investigator for such a study, or are you
`16 asking some other question?
`17 Q I'm not limiting it to principal
`18 investigator, but a principal investigator or otherwise
`19 participated in one of those -- such a study.
`20 A So some of the studies that have taken
`21 place in clinical context have involved patients who
`22 have been in my care. So I guess to the extent that
`23 I've been involved in the care of patients who have
`24 been involved in studies, I've had involvement in the
`25 studies. But I've not specifically had involvement as
`
` 1 a principal investigator in the study.
` 2 Q Okay. At any time since being retained in
` 3 this matter, have you reviewed any information relating
` 4 to any other proceedings involving Praxair or Praxair
` 5 distribution?
` 6 A No, I have not.
` 7 Q Since submitting your declaration, have you
` 8 reviewed any materials that have not -- that are not
` 9 listed in your report?
`10 MR. SCHULER: Object to the form.
`11 THE WITNESS: I don't believe so. I
`12 believe all of the materials that I've reviewed would
`13 fall under the description in paragraph 16.
`14 BY MS. KERRANE:
`15 Q And this declaration includes all of your
`16 opinions in this matter; is that correct?
`17 A That is correct.
`18 Q And as you sit here today, you have no
`19 different or new opinion, other than what you have
`20 stated in this declaration, correct?
`21 MR. SCHULER: Object to the form.
`22 THE WITNESS: No, I have no additional
`23 opinions, and these remain my opinions.
`24 BY MS. KERRANE:
`25 Q Have you reviewed any publications other
`
` 1 than those listed in paragraph 16, or referred to in
` 2 paragraph 16?
` 3 MR. SCHULER: Object to the form.
` 4 THE WITNESS: Can you be more specific in
` 5 terms of your question, because the reason I'm asking
` 6 is I review a lot of publications in my role as a
` 7 physician. I think specifically, you must be asking
` 8 about a certain type of publication.
` 9 Can you help me understand --
`10 BY MS. KERRANE:
`11 Q Sure.
`12 A -- your question?
`13 Q Have you reviewed any publications that
`14 relate to the subject matter at issue in this
`15 investigation or this inter partes review that are not
`16 referred to in paragraph 16?
`17 MR. SCHULER: Can I have that one back.
`18 (Whereupon the following portion of the testimony was
`19 repeated by the Court Reporter:
`20 "QUESTION: Have you reviewed any
`21 publications that relate to the subject matter at issue
`22 in this investigation or this inter partes review that
`23 are not referred to in paragraph 16?")
`24 MR. SCHULER: I'll object to the form.
`25 THE WITNESS: I don't think so.
`
`Page 18
`
`Page 20
`
` 1 BY MS. KERRANE:
` 2 Q If you can take a look at paragraph 1 of
` 3 your report.
` 4 MS. KERRANE: Excuse me, your declaration.
` 5 MR. SCHULER: That's all right. I was just
` 6 going to say, could we -- you understand that if she
` 7 says "report," she actually means your declaration?
` 8 THE WITNESS: Yes.
` 9 MR. SCHULER: Then I won't object anymore.
`10 BY MS. KERRANE:
`11 Q And if you could, take a look at the last
`12 sentence in there.
`13 MR. SCHULER: And the reason she does that
`14 is that most of the time, an expert gives a report in
`15 litigation. And this time, it's your written
`16 testimony.
`17 THE WITNESS: The last sentence in
`18 paragraph 1, you're directing me to?
`19 BY MS. KERRANE:
`20 Q That's correct.
`21 A (Witness reviewing document.)
`22 Okay.
`23 Q And my question to you is: What do you
`24 mean by the term "neonate"?
`25 A What I meant by the term "neonate" is an
`
`Min-U-Script®
`
`Barkley Court Reporters
`
`(5) Pages 17 - 20
`
`005
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 21
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 23
`
` 1 infant who is younger than 28 days.
` 2 Q Okay. And what do you mean by the term
` 3 "infant"?
` 4 A An infant is a person younger than one year
` 5 of age.
` 6 Q And what do you mean by "older children"?
` 7 A Eighteen down to one year and one day.
` 8 Q Thank you.
` 9 Are you aware that the patent has defined
`10 the term "child" or "children"?
`11 A I am aware that the patent describes
`12 neonates.
`13 Q What's your understanding of what the
`14 patent describes as neonates?
`15 MR. SCHULER: I'll object. The patent
`16 speaks for itself.
`17 THE WITNESS: Do you have a copy of the
`18 patent?
`19 BY MS. KERRANE:
`20 Q I do. This is Exhibit 1001, the '112
`21 patent.
`22 A (Witness reviewing document.)
`23 Are you referring to the second paragraph
`24 in column 4?
`25 Q I guess I don't know what your question is.
`
` 1 You mean when I was speaking of children?
` 2 A Yes.
` 3 Q Yes.
` 4 But I think you mentioned that you believe
` 5 that the patent also has a definition for "neonate"; is
` 6 that correct?
` 7 A Yes, I believe it does.
` 8 Q Okay. Could you show me where that is?
` 9 A (Witness reviewing document.)
`10 I did not see the definition down my first
`11 pass. Would you like me to look again?
`12 Q No, that's okay. Let's focus back on
`13 children for now.
`14 As you mentioned, in column 4, starting at
`15 line 23, the patent has a definition for the term
`16 "children"; is that correct?
`17 A Yes, it does.
`18 Q Okay. And would you agree that that's
`19 fairly consistent with what you have described as older
`20 children in paragraph 1?
`21 A The difference between the two definitions
`22 is that the definition used in the patent describes
`23 children as being infants who are beyond the neonatal
`24 period on up through the definition of older children
`25 that I gave in paragraph 1 of my declaration.
`
` 1 Q Because in your paragraph 1, you described
` 2 it as being a year and one day and above for older
` 3 children; is that correct?
` 4 A That was how I defined it, yes.
` 5 Q And the patent has used the term "children"
` 6 to refer to both what you considered the infant phase
` 7 and what you consider the older-child phase?
` 8 A That's correct.
` 9 Q Would you agree that someone of skill in
`10 the art reading the '112 patent would understand that
`11 the term for "child" or "children" refers to a patient
`12 that's four weeks to 18 years of age?
`13 A Yes, I think that someone skilled in the
`14 art would understand the definition that's given in the
`15 patent.
`16 Q Okay. And you have not offered any
`17 opinions that would indicate you disagree with this
`18 definition, correct?
`19 A No. This definition is okay with me.
`20 Q Okay. Great. And I believe you mentioned
`21 to a definition for the term "neonate." I'm going to
`22 provide you with the decision to institute that you
`23 referred to earlier by the board. And this document
`24 may be what you were referring to for the definition
`25 for "neonate." This is exhibit -- actually, it's paper
`
`Page 22
`
`Page 24
`
` 1 12 in this proceeding, and --
` 2 MR. SCHULER: So how do you want to refer
` 3 to it?
` 4 MS. KERRANE: We'll just refer to it as
` 5 "paper 12," if that's okay with you.
` 6 THE WITNESS: (Witness reviewing document.)
` 7 BY MS. KERRANE:
` 8 Q And I believe page 8 of this document
` 9 provides a definition for the term "neonate."
`10 Do you see that?
`11 A Yes, I see that in paragraph 1.
`12 Q And do you agree with this definition?
`13 A Yes. This is a commonly used definition.
`14 Q And would you agree that you've used the
`15 term consistently with this definition in your
`16 declaration?
`17 A Yes.
`18 Q Thank you. You can put that away for now.
`19 Do you have an understanding of what the
`20 burden of proof is for invalidity in a proceeding
`21 before the Patent Office?
`22 MR. SCHULER: I'll object. The declaration
`23 speaks for itself.
`24 THE WITNESS: (Witness reviewing document.)
`25 Yes.
`
`Min-U-Script®
`
`Barkley Court Reporters
`
`(6) Pages 21 - 24
`
`006
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 25
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 27
`
` 1 BY MS. KERRANE:
` 2 Q What is that understanding?
` 3 MR. SCHULER: Same objection.
` 4 THE WITNESS: Referring back to my
` 5 declaration to paragraphs 22 and 25, my understanding
` 6 is that in an IPR proceeding, the preponderance of the
` 7 evidence is satisfied if the proposition is more likely
` 8 than not.
` 9 BY MS. KERRANE:
`10 Q Do you understand how this burden differs
`11 from that in District Court?
`12 A I do not.
`13 Q Do you understand what a presumption of
`14 validity is?
`15 A That is a legal term that has not been
`16 explained to me in detail.
`17 Q Do you know if the presumption of validity
`18 applies in a patent proceeding --
`19 MR. SCHULER: I'll object --
`20 BY MS. KERRANE:
`21 Q -- in front of the Patent Office?
`22 MR. SCHULER: I'll object to the extent it
`23 calls for a legal conclusion.
`24 THE WITNESS: I don't have an opinion on
`25 that.
`
` 1 BY MS. KERRANE:
` 2 Q And you don't have an understanding of
` 3 whether it does or does not?
` 4 MR. SCHULER: Same objection.
` 5 THE WITNESS: I do not have an opinion, and
` 6 I don't recall reading anything or being instructed on
` 7 that matter.
` 8 BY MS. KERRANE:
` 9 Q Looking at paragraph 13 in your report, you
`10 state that you've been asked to provide opinions
`11 regarding the meanings of the claims of the '112
`12 patent; is that correct?
`13 A Yes.
`14 MR. SCHULER: I'm sorry, where are we? Oh,
`15 okay, second line. I was reading the first sentence.
`16 THE WITNESS: Do you mind asking me the
`17 question again so I'm sure that I'm answering the
`18 question you asked?
`19 BY MS. KERRANE:
`20 Q Sure. In paragraph 13, you state that
`21 you've been asked to provide opinions regarding the
`22 meaning of the claims of the '112 patent; is that
`23 correct?
`24 MR. SCHULER: Object to the form.
`25 THE WITNESS: Yes, I have been -- I have
`
` 1 been asked to provide opinions.
` 2 BY MS. KERRANE:
` 3 Q Regarding the meanings of the claims; is
` 4 that correct?
` 5 A Yes.
` 6 Q And what standard did you use to interpret
` 7 the claims?
` 8 MR. SCHULER: Again, objection.
` 9 This declaration speaks for itself.
`10 THE WITNESS: Can you ask me the question
`11 again?
`12 BY MS. KERRANE:
`13 Q Sure.
`14 What standard did you use to interpret the
`15 claims?
`16 A I used the -- I considered the
`17 preponderance of the evidence when considering the
`18 claims.
`19 Q Okay. And do you know what standard you
`20 used to determine the meaning of the claims?
`21 MR. SCHULER: Objection, asked and
`22 answered. I think his declaration speaks for itself.
`23 THE WITNESS: I'm not sure whether you're
`24 referencing something that I don't know about.
`25 Can you ask the question again?
`
`Page 26
`
`Page 28
`
` 1 BY MS. KERRANE:
` 2 Q Yes, no problem.
` 3 One of the tasks that you were given by
` 4 counsel for Ikaria was to provide opinions regarding
` 5 the meaning of the claims of the '112 patent, and my
` 6 question to you is: What standard did you use to
` 7 interpret the meaning of those claims?
` 8 MR. SCHULER: And I'll again object. The
` 9 declaration speaks for itself.
`10 THE WITNESS: (Witness reviewing document.)
`11 I don't know whether there's a name for the standard,
`12 but I have interpreted the claims from the point of
`13 view of a person of ordinary skill in the art as of the
`14 June 30th, 2009, date.
`15 BY MS. KERRANE:
`16 Q And do you understand that, I believe, in
`17 paragraph 19 under the heading "Interpreting Patent
`18 Claims," you discussed a little bit more about how you
`19 interpreted the meanings of the terms, correct?
`20 A Paragraph 19 does address aspects related
`21 to the interpretation of the patent claims.
`22 Q And at the end of that paragraph, you state
`23 that your interpretation is consistent with the
`24 broadest reasonable construction; is that correct?
`25 A Yes, that is correct.
`
`Min-U-Script®
`
`Barkley Court Reporters
`
`(7) Pages 25 - 28
`
`007
`
`

`
`PRAXAIR DISTRIBUTION, INC. v.
`INO THERAPEUTICS, LLC.
`
`Page 29
`
`GEOFFREY L. ROSENTHAL, M.D., Ph.D.
`January 5, 2016
`Page 31
`
` 1 Q And what's your understanding of the
` 2 broadest reasonable construction?
` 3 MR. SCHULER: And let me caution you, to
` 4 the extent -- don't divulge the specific content of any
` 5 communication with counsel, but please certainly recite
` 6