Ivan T. Hofmann, CPA/CFF, CLP
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 3 --------------------------------
`
` 4 MYLAN PHARMACEUTICALS INC.,
`
` 5 Petitioner
`
` 6 v.
`
` 7 JANSSEN ONCOLOGY, INC.
`
` 8 Patent Owner
`
` 9 --------------------------------
`
` 10 Case IPR2016-01332
`
` 11 Patent No. 8,822,438
`
` 12 --------------------------------
`
` 13 VIDEOTAPED DEPOSITION OF EXPERT
`
` 14 IVAN T. HOFMANN, CPA/CFF, CLP
`
` 15
`
` 16 February 7, 2017
`
` 17 9:02 a.m.
`
` 18
`
` 19 700 13th Street NW
`
` 20 Washington, DC 20005
`
` 21
`
` 22 Denise D. Vickery, CRR/RMR
`
` 23 GOLKOW TECHNOLOGIES, INC.
`
` 877.370.3377 ph | 917.591.5672 fax
`
` 24 deps@golkow.com
`
`Golkow Technologies, Inc.
`
`Page 1 (1)
`
`JANSSEN EXHIBIT 2128
`Mylan v. Janssen IPR2016-01332
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 2
`
`Page 4
`
` 1 A P P E A R A N C E S
` 2
` 3 Attorneys for Petitioner:
` 4 PERKINS COIE
` 5 700 13th Street NW
` 6 Suite 600
` 7 Washington, DC 20005
` 8 202.654.6200
` 9 BY: BRANDON M. WHITE, ESQ.
`10 MARIA A. STUBBINGS, ESQ.
`11 BMWhite@perkinscoie.com
`12 MStubbings@perkinscoie.com
`13
`14 Attorneys for Patent Owner:
`15 SIDLEY AUSTIN LLP
`16 1501 K Street NW
`17 Washington, DC 20005
`18 202.736.8060
`19 BY: PAUL J. ZEGGER, ESQ.
`20 pzegger@sidley.com
`21
`
`22
`23 Also Present:
`24 Michael Gay, Videographer
`
` 1 P R O C E E D I N G S
` 2 - - -
` 3 THE VIDEOGRAPHER: We are on the
` 4 record. The time now is 9:02.
` 5 This marks the beginning of disk
` 6 No. 1 for the videotaped deposition
` 7 testimony of Ivan Hofmann in the matter
` 8 of Mylan Pharmaceuticals Inc. versus
` 9 Janssen Oncology, Inc. This case is
`10 pending in United States Patent and
`11 Trademark Office before the Patent Trial
`12 and Appeal Board, case No. IPR
`13 2016-01332.
`14 Today's date is February 7, 2017.
`15 This deposition is being conducted at 700
`16 13th Street, Northwest, Washington, DC.
`17 Will all attorneys present please
`18 identify themselves and who they
`19 represent.
`20 MR. ZEGGER: My name is Paul
`21 Zegger. I'm with the firm of Sidley
`22 Austin for the Patent Owner, Janssen
`23 Oncology, Inc.
`24 MR. WHITE: I'm Brandon White
`
`Page 3
`
`Page 5
`
` 1 I N D E X
` 2 EXAMINATION OF
` 3 IVAN T. HOFMANN, CPA/CFF, CLP PAGE
` 4 BY MR. ZEGGER 5
`
` 5
`
` 6 E X H I B I T S
` 7 HOFMANN DEPOSITION EXHIBITS PAGE
` 8 JANSSEN 2006 January 26, 2016 86
` 9 Johnson & Johnson Reports
`10 2015 Fourth-Quarter Results
`11 JANSSEN 2007 January 24, 2017 88
`12 Johnson & Johnson Reports
`13 2016 Fourth-Quarter Results
`14 JANSSEN 2008 Concordia Pharmaceuticals v. 103
`15 Method Pharmaceuticals
`16 PREVIOUSLY MARKED EXHIBITS REFERENCED
`17 MYLAN 1017 Declaration of 5
`18 Ivan T. Hofmann, CPA/CFF, CLP
`19 MYLAN 1012 June 4, 2013 Response to 63
`20 Office Action of March 4, 2013
`21 MYLAN 1055 Top 50 pharmaceutical 105
`22 products by global sales 2014
`
`23
`
`24
`
` 1 from Perkins Coie on behalf of the
` 2 Petitioner.
` 3 MS. STUBBINGS: Maria Stubbings
` 4 from Perkins Coie also on behalf of
` 5 Petitioner.
` 6 THE VIDEOGRAPHER: My name is
` 7 Michael Gay. I'm with Golkow
` 8 Technologies. Our court reporter today
` 9 is Denise Vickery also with Golkow
`10 Technologies and will now swear in our
`11 witness.
`12 - - -
`13 IVAN T. HOFMANN, CPA/CFF, CLP
`14 called for examination, and, after having been
`15 duly sworn, was examined and testified as
`16 follows:
`17 THE VIDEOGRAPHER: You may
`18 proceed.
`19 EXAMINATION
`20 BY MR. ZEGGER:
`21 Q. Good morning.
`22 A. Good morning.
`23 Q. Let me show you Mylan Exhibit
`24 1017.
`
`Golkow Technologies, Inc.
`
`Page 2 (2 - 5)
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 6
`
`Page 8
`
` 1 Sir, do you recognize this as
` 2 your declaration in the present IPR?
` 3 A. (Witness reviewing document).
` 4 I do.
` 5 Q. Is that your signature on page
` 6 24?
` 7 A. It is.
` 8 Q. Okay. You signed your
` 9 declaration back on June 30th of 2016?
`10 A. Yes, sir.
`11 Q. Is it correct that your
`12 declaration deals with the issue of commercial
`13 success as it relates to the issue of
`14 obviousness or nonobviousness of the '438
`15 patent?
`16 A. It does.
`17 Q. Okay. Do you have an advanced
`18 degree in economics?
`19 A. I have a bachelor's degree in
`20 economics.
`21 Q. Okay. Are you an oncologist?
`22 A. I am not.
`23 Q. Okay. Do you have any education
`24 or background in the field of oncology?
`
` 1 is sometimes considered.
` 2 Q. How much time did you spend as of
` 3 the date of your declaration, June 30, 2016?
` 4 A. I don't have a firm number in
` 5 mind.
` 6 Q. Well, from the time that you were
` 7 first retained until the date of your
` 8 declaration, do you have some idea of the hours
` 9 that you've spent?
`10 A. I would say dozens. Beyond that,
`11 I can't refine it.
`12 Q. All right. Did anyone help you?
`13 A. Yes.
`14 Q. Who?
`15 A. In particular within my firm,
`16 Raymond Bummer and Edward Lebair.
`17 Q. What did they do?
`18 A. So for projects such as this, I
`19 identify a team to assist me. We basically
`20 collaboratively review documents, evidence,
`21 information, and develop what becomes my
`22 declaration. So all their work is done under my
`23 supervision and direction, but they assist me
`24 in, you know, pulling together what ultimately
`
`Page 7
`
`Page 9
`
` 1 A. In terms of formal education, no.
` 2 I've studied issues involving pharmaceutical
` 3 economics in many fields, including oncological
` 4 products.
` 5 Q. Okay. Are you a urologist?
` 6 A. No, sir.
` 7 Q. Do you have any education or
` 8 background in the field of urology?
` 9 A. There again, no formal education,
`10 but I've studied a variety of pharmaceutical
`11 products that are directed to the field of
`12 urology.
`13 Q. Okay. You're a certified public
`14 accountant; correct?
`15 A. I am.
`16 Q. Okay. When were you first
`17 retained in connection with this IPR?
`18 A. Sometime last May or June.
`19 Q. What were you asked to do?
`20 A. I was asked to consider the
`21 economic issues surrounding claims of commercial
`22 success and nexus with respect to the '438
`23 patent in particular and obviousness inquiry
`24 where commercial success is a term of art that
`
` 1 becomes the issued declaration.
` 2 Q. Did anyone else help you?
` 3 A. No.
` 4 Q. What criteria did you use to
` 5 determine commercial success?
` 6 A. Well, I think I explain my
` 7 opinions within my declaration.
` 8 The criteria as I understand it
` 9 or to look at the evidence that exists with
`10 respect to the commercial performance of the
`11 product and whether there's a nexus between the
`12 commercial performance and the asserted claims
`13 of the patent at issue.
`14 Q. Do you have a particular metric
`15 for the first part, the dollars part of the
`16 commercial success analysis?
`17 MR. WHITE: Objection to form.
`18 THE WITNESS: I think there are a
`19 number of different metrics that are
`20 often looked at in a commercial success
`21 inquiry directed to the question of
`22 obviousness.
`23 BY MR. ZEGGER:
`24 Q. And do you have a particular
`
`Golkow Technologies, Inc.
`
`Page 3 (6 - 9)
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 10
` 1 dollar metric that you use with respect to
` 2 commercial success?
` 3 MR. WHITE: Objection to form.
` 4 THE WITNESS: I don't believe
` 5 there are particular bright-line metrics
` 6 with respect to commercial success. It's
` 7 a very facts and circumstances intensive
` 8 inquiry.
` 9 BY MR. ZEGGER:
`10 Q. Do you think Zytiga was a
`11 commercial success?
`12 A. My opinions are explained within
`13 my declaration.
`14 My opinion is that commercial
`15 performance does not provide objective indicia
`16 of nonobviousness in the form of commercial
`17 success for the reasons outlined in my
`18 declaration.
`19 Q. Okay. One of those reasons was
`20 lack of nexus; is that right?
`21 A. Among others.
`22 Q. Okay. Another reason was a
`23 blocking patent; is that right?
`24 A. Yes.
`
`Page 12
` 1 performance with the claims of the patent
` 2 at issue.
` 3 BY MR. ZEGGER:
` 4 Q. Well, let me put it this way.
` 5 If there were a nexus and there
` 6 weren't a blocking patent, would you have found
` 7 that there was commercial success in this case?
` 8 MR. WHITE: Objection to form.
` 9 THE WITNESS: Well, I think
`10 that's a counterfactual hypothetical as I
`11 understand to the landscape. So I think
`12 there's a hazard in entertaining
`13 counterfactual hypotheticals.
`14 I think that very clearly there
`15 is a blocking patent, very clearly there
`16 is a lack of nexus. I don't -- I don't
`17 quarrel with the fact that there are
`18 relatively significant sales of Zytiga,
`19 but in context that I provide.
`20 So, you know, I think that the
`21 opinions and conclusions with respect to
`22 the lack of objective indicia are pretty
`23 clearly laid out in my declaration.
`24 BY MR. ZEGGER:
`
`Page 11
` 1 Q. Okay. But other than those, were
` 2 there any other reasons for your opinion that
` 3 there was no commercial success?
` 4 A. I think those are -- those are
` 5 central opinions, and I think the rest of my
` 6 opinions are laid out in my declaration.
` 7 Q. Okay. But your opinion is not
` 8 based on any lack of dollar sales of Zytiga; is
` 9 that right?
`10 A. Well --
`11 MR. WHITE: Objection. Form.
`12 THE WITNESS: -- I think my
`13 opinions are expressed in my report. I
`14 provide, I think, context that's lacking
`15 in the record as it exists with respect
`16 to the findings of the examiner.
`17 So I do, I think, provide context
`18 to some of the claims with respect to the
`19 commercial performance of Zytiga, but
`20 ultimately my -- my opinions regarding
`21 the lack of objective indicia of
`22 nonobviousness tend to surround the
`23 existence of the blocking patent and a
`24 lack of nexus of the commercial
`
`Page 13
` 1 Q. Now, in Attachment A-1 of your
` 2 declaration, you have a list of materials that
` 3 you considered; is that right?
` 4 A. That's right, at least as of the
` 5 date of my declaration.
` 6 Q. Are all -- is that a complete
` 7 list of the materials that were provided to you
` 8 in connection with this IPR as of the date of
` 9 your declaration?
`10 A. Yeah. As of the date of my
`11 declaration, it's my attempt to administratively
`12 gather the information. To the extent I cite
`13 other things within the body of my declaration,
`14 those would also be included.
`15 Q. Were all of those materials
`16 provided to you?
`17 A. It would be some combination of
`18 materials provided as well as, you know, things
`19 I and my team pulled directly from the IPR
`20 docket and/or independent research.
`21 Q. On your list of materials
`22 considered, can you identify those that you and
`23 your team found on your own as opposed to being
`24 provided to you?
`
`Golkow Technologies, Inc.
`
`Page 4 (10 - 13)
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 14
`
` 1 A. I can't as I sit here right now.
` 2 Q. Could you look at your
` 3 declaration, page 3, Footnote 1.
` 4 Are you there?
` 5 A. I am.
` 6 Q. Okay. Now, that mentions a
` 7 declaration of DeForest McDuff in an IPR brought
` 8 by Amerigen; is that right?
` 9 A. It does.
`10 Q. And your footnote states:
`11 "I have reviewed the McDuff
`12 declaration in forming my opinions."
`13 Is that right?
`14 A. Among other things.
`15 Q. Okay. Well, did you, in fact,
`16 review the McDuff December 4, 2015 declaration
`17 in IPR 2016-00286?
`18 A. I did.
`19 Q. Is it your understanding that
`20 Dr. McDuff is an economist who was hired by
`21 Amerigen in a different IPR?
`22 A. I think Amerigen as well as
`23 another petitioner.
`24 Q. Okay. Did you rely upon
`
`Page 15
` 1 Dr. McDuff's declaration in forming opinions set
` 2 forth in your declaration?
` 3 MR. WHITE: Objection to form.
` 4 THE WITNESS: I wouldn't say I
` 5 relied upon it. I would say I reviewed
` 6 it, and it was part of the information
` 7 that I considered with respect to forming
` 8 my opinions.
` 9 BY MR. ZEGGER:
`10 Q. Did you talk to Dr. McDuff about
`11 his declaration?
`12 A. No, sir.
`13 Q. Did you copy portions of
`14 Dr. McDuff's declaration for use in your
`15 declaration?
`16 A. I certainly reviewed Dr. McDuff's
`17 declaration, and there are certain areas of my
`18 declaration where I followed the language that
`19 already existed as -- as one can see reviewing
`20 my declaration compared to his.
`21 Q. Well, have you compared your
`22 declaration to that of Dr. McDuff's to see if
`23 any portions are the same?
`24 A. Sure.
`
`Page 16
` 1 Q. Well, would you be surprised if
` 2 portions of your declaration are identical to
` 3 those in Dr. McDuff's declaration?
` 4 A. Not at all.
` 5 Q. Okay. How many times have you
` 6 performed financial and economic analyses
` 7 relating to prescription pharmaceutical
` 8 products?
` 9 A. I mean, I've studied virtually
`10 every therapeutic class of drugs, clearly more
`11 than a hundred projects both in and outside of a
`12 dispute setting. I've studied pharmaceutical
`13 products and economic issues surrounding them.
`14 Q. Did any relate to cancer drugs?
`15 A. Yes.
`16 Q. How many?
`17 A. I haven't cataloged it
`18 specifically that way, but I would say dozens.
`19 Q. Well, did any of the cases you've
`20 worked on in the past relate to drugs to treat
`21 prostate cancer?
`22 A. Again, I haven't cataloged it
`23 that way. I'm sure they have.
`24 Q. Can you recall any matters that
`
`Page 17
` 1 you've worked on relating to drugs to treat
` 2 prostate cancer?
` 3 MR. WHITE: And I just caution
` 4 the witness to the extent anything is
` 5 confidential about your prior engagements
` 6 with clients, this transcript is public.
` 7 So that's my caution.
` 8 THE WITNESS: Yeah. Like I said,
` 9 I haven't really cataloged it in the way
`10 you're asking it, and I am concerned
`11 because a lot of the work that I do is
`12 outside of a dispute setting and are
`13 confidential terms.
`14 So as I sit here right now, I'm
`15 not sure that I can get into projects or
`16 that able to provide specifics.
`17 BY MR. ZEGGER:
`18 Q. Well, I'm not asking you to
`19 divulge anything that would be of a confidential
`20 nature.
`21 I'm just asking whether any of
`22 your prior work has related to drugs to treat
`23 prostate cancer.
`24 A. And I would give the same answer.
`
`Golkow Technologies, Inc.
`
`Page 5 (14 - 17)
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 18
`
` 1 I'm sure they have. I haven't
` 2 cataloged it specifically as you're asking the
` 3 question. Certainly oncological products come
` 4 to mind that have gone all the way through trial
` 5 testimony where I'm happy to talk about those
` 6 matters.
` 7 I think any other matters, the
` 8 work that I've done would be confidential either
` 9 because they haven't surfaced in published
`10 testimony or they were outside of a public forum
`11 where my work would be confidential.
`12 Q. Well, in any event, no specific
`13 engagement that you've worked on comes to mind
`14 as pertaining to prostate cancer specifically?
`15 A. I don't quite think I said that.
`16 I said I don't have anything that
`17 comes to mind that I'm comfortable disclosing as
`18 I sit here right now.
`19 Q. Well, I'm not asking you to
`20 disclose it.
`21 I'm just asking whether you can
`22 recall working on any matter that related to
`23 prostate cancer. Yes or no?
`24 A. Yes.
`
`Page 20
` 1 was engaged by the USPTO and the Office of the
` 2 Solicitor. One -- one time I think it was in
` 3 2015 and the other was in, I think, 2012.
` 4 Q. Are those cases listed in your
` 5 CV?
` 6 A. In terms of testimony, I don't
` 7 believe they are because they didn't -- they
` 8 didn't mature into testimony.
` 9 Q. So no deposition, no trial
`10 testimony in those matters?
`11 A. They both settled. That's
`12 correct.
`13 Q. So you were engaged, but you
`14 didn't have to actually testify?
`15 A. They did not mature into
`16 testimony, but I actively worked with the USPTO
`17 in both of those matters.
`18 Q. Were those for or against the
`19 patent applicant?
`20 A. So in both of those instances,
`21 they were against the patent applicant.
`22 Q. Now, you discuss prostate cancer
`23 in your declaration and specifically paragraphs
`24 13 to 15?
`
`Page 19
`
`Page 21
`
` 1 Q. You can.
` 2 Did any relate to Zytiga?
` 3 A. No, sir.
` 4 Q. How many times have you worked as
` 5 an expert in a pharmaceutical matter
` 6 specifically to address the issue of commercial
` 7 success?
` 8 A. Okay. So including, but not
` 9 limited to, commercial success?
`10 Q. Just specifically on the issue of
`11 commercial success.
`12 A. And maybe I should refine it.
`13 So I may have been asked to look
`14 at other economic issues as well, but those that
`15 have included commercial success, I would say
`16 probably 30 to 40 different matters.
`17 Q. You've also worked on patent
`18 damages cases?
`19 A. I have.
`20 Q. Have you been engaged as an
`21 expert by the United States Patent Office?
`22 A. I have.
`23 Q. When?
`24 A. So on two different occasions, I
`
` 1 A. I do.
` 2 Q. Where was the source of your
` 3 information about prostate cancer?
` 4 A. As I explain in Footnote 2, I'm
` 5 not an oncologist or urologist, but I've cited
` 6 my understandings and the sources as referenced
` 7 in the footnotes that -- that accompany
` 8 paragraphs 13 to 15.
` 9 Q. So is it fair to say the
`10 information about prostate cancer in those
`11 paragraphs is not from your own expertise or
`12 background?
`13 A. I mean, certainly not as a -- I'm
`14 not a prescriber of these products. My -- my
`15 knowledge and expertise of prescription
`16 pharmaceutical products and the economic issues
`17 is something I bring to bear here. The specific
`18 sources are largely Mayo Clinic and other sites
`19 as listed here.
`20 Q. Now, the sentences in paragraphs
`21 13 to 15 and elsewhere in your declaration have
`22 the phrase "It is my understanding" or "I
`23 understand"; is that right?
`24 A. Occasionally.
`
`Golkow Technologies, Inc.
`
`Page 6 (18 - 21)
`
`

`

`Page 24
`
`Ivan T. Hofmann, CPA/CFF, CLP
`Page 22
` 1 Q. Okay. Now, is that your way of
` 2 indicating that the information is based on
` 3 something other than your own expertise?
` 4 A. We'd have to look at specific
` 5 sentences, but the general convention is, I want
` 6 to make it clear that I'm not providing
` 7 technical opinions. I'm not providing opinions
` 8 as a clinician or oncologist or urologist. So
` 9 where I have an understanding of what I'll call
`10 more technical or clinical issues, I tend to use
`11 the words "I understand" or "It's my
`12 understanding," not that it's an affirmative
`13 personal opinion of my own.
`14 Q. Okay. And does that also apply
`15 when you're talking about legal standards of
`16 obviousness and commercial success?
`17 A. There again, I'd be happy to look
`18 at specific sentences, but generally that's so.
`19 I'm not providing legal opinions or legal
`20 authority, but I have a certain understanding of
`21 legal issues particularly as they relate to the
`22 framework of the economics surrounding
`23 commercial success as a term of art in an
`24 obviousness inquiry.
`
` 1 A. I mean, among other things. I
` 2 have a number of footnotes in those couple
` 3 paragraphs.
` 4 Q. All right. Well, the footnotes
` 5 relating to your understanding of Zytiga mention
` 6 the Zytiga product label; is that right?
` 7 A. Yeah. Like I said, among other
` 8 sites, but included within that is the Zytiga
` 9 label.
`10 Q. Well, something else that's
`11 included is the material from the FDA website;
`12 is that right?
`13 A. Yes, sir.
`14 Q. Also included is material from
`15 the Zytiga website?
`16 A. Yes.
`17 Q. And also material from the Mayo
`18 Clinic?
`19 A. Yes.
`20 Q. Does that represent the sum total
`21 of the basis of your knowledge of Zytiga?
`22 MR. WHITE: Objection to form.
`23 THE WITNESS: No. I mean,
`24 this -- this, again, is just basic
`
`Page 23
` 1 Q. Okay. But you yourself don't
` 2 have a background in law?
` 3 A. I don't have formal training in
` 4 law. I am regularly asked to analyze economic
` 5 issues in a dispute setting. So I have pretty
` 6 good familiarity, but I'm not providing legal
` 7 opinions, no.
` 8 Q. You're not providing any legal
` 9 opinions in the context of this case; correct?
`10 MR. WHITE: Objection to form.
`11 THE WITNESS: I'm not providing
`12 express legal opinions. I'm providing
`13 economic opinions. Those opinions may
`14 inform the trier of fact on what are
`15 legal issues, but my opinions are
`16 economic, not legal.
`17 BY MR. ZEGGER:
`18 Q. In paragraphs 16 and 17 of your
`19 declaration, you set forth your understanding of
`20 Zytiga; is that right?
`21 A. Yeah, generally background on
`22 Zytiga.
`23 Q. Okay. And you looked at the
`24 Zytiga product label; is that right?
`
`Page 25
` 1 background information. I've obviously
` 2 studied all the materials that are listed
` 3 in Appendix A-1 to my report, which
` 4 includes other information both
` 5 documents, reports, testimony, etc. that
` 6 are all part of the body of evidence I've
` 7 reviewed with respect to Zytiga.
` 8 BY MR. ZEGGER:
` 9 Q. Did you talk to any doctors who
`10 prescribed Zytiga?
`11 A. I didn't have direct
`12 conversations with doctors that prescribed
`13 Zytiga. I certainly reviewed some technical
`14 expert reports which included opinions of
`15 physicians that do prescribe Zytiga.
`16 Q. Did you talk with anyone who has
`17 taken Zytiga?
`18 A. I have not had conversations with
`19 individuals on Zytiga, but I certainly reviewed
`20 documents and information that are contained in
`21 the record regarding people that are on Zytiga
`22 as a course of therapy.
`23 Q. Is it correct that in paragraph
`24 19 of your declaration you set forth claim 1 of
`
`Golkow Technologies, Inc.
`
`Page 7 (22 - 25)
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 26
`
`Page 28
`
` 1 the '438 patent?
` 2 A. I do.
` 3 Q. Do you know whether any court has
` 4 ever construed terms in claim 1?
` 5 A. (Pause). As I sit here right
` 6 now, I'm not sure.
` 7 Q. Well, is it fair to say that your
` 8 analysis did not consider whether any court had
` 9 ruled on the meaning of claim 1?
`10 A. I'm trying to remember if that's
`11 addressed one way or the other in some of the
`12 technical expert reports. To the extent it was,
`13 it's certainly part of the information that I
`14 considered. To the extent that it's not in the
`15 reports or my exhibits, then that wouldn't have
`16 been part of what I looked at.
`17 Q. Well, to the best of your
`18 recollection, did your analysis just focus on
`19 the words of the claim as they appear in your
`20 paragraph 19?
`21 MR. WHITE: Objection to form.
`22 THE WITNESS: Well, I wouldn't
`23 say it that way.
`24 I mean, I think I reference not
`
` 1 A. I do.
` 2 Q. And specifically to portions of
` 3 the '483 prosecution history?
` 4 A. Sure.
` 5 Q. Did you read the entirety of the
` 6 '438 patent prosecution?
` 7 A. It, you know, the entirety of the
` 8 prosecution is part of the information I
` 9 reviewed and considered. Of course I'm, you
`10 know, my focus is on economic issues as opposed
`11 to technical or clinical issues in terms of
`12 forming affirmative opinions, but the entirety
`13 is part of the information I reviewed and
`14 considered.
`15 Q. Were the portions of the '438
`16 prosecution history that are cited in your
`17 declaration provided to you by someone else?
`18 A. I think that the prosecution
`19 history in its entirety, as referenced in my
`20 report and appendix, were provided to me by
`21 counsel, and I identified areas that I cited as
`22 referenced through my declaration.
`23 Q. Did you select those portions of
`24 the prosecution history to cite in your
`
`Page 27
`
`Page 29
`
` 1 only the patent but also some of the
` 2 technical experts that discuss the
` 3 patents, the arguments surrounding
` 4 obviousness, and why people have formed a
` 5 view that the patents are obvious.
` 6 So I've considered context beyond
` 7 just the words as they appear in the
` 8 patent.
` 9 BY MR. ZEGGER:
`10 Q. But in terms of looking at the
`11 scope of claim 1, were you focusing simply on
`12 the words of the claim?
`13 MR. WHITE: Objection to form.
`14 THE WITNESS: I mean, in this
`15 background section, I'm -- I'm providing
`16 the words as they appear in the claim,
`17 but I think that, you know, elsewhere in
`18 my report I make reference to technical
`19 experts that address technical issues
`20 with respect to the patent claims.
`21 BY MR. ZEGGER:
`22 Q. You also refer in your
`23 declaration to the prosecution history of the
`24 '438 patent; is that right?
`
` 1 declaration?
` 2 A. I think that it would be some
` 3 combination of me selecting them and/or, as
` 4 discussed earlier, I had the McDuff declaration
` 5 which had cited portions of the declaration that
` 6 I considered in forming my own opinions.
` 7 Q. Did you use the McDuff
` 8 declaration as a resource for your declaration?
` 9 MR. WHITE: Objection. Form.
`10 THE WITNESS: As I explain in
`11 Footnote 1 and as we discussed, it's
`12 certainly part of the body of evidence
`13 that I considered in forming my own
`14 opinions.
`15 BY MR. ZEGGER:
`16 Q. In paragraphs 21 to 23, you set
`17 forth definitions of "commercial success" and
`18 "nexus"; is that right?
`19 A. I do.
`20 Q. Where did you get those
`21 definitions?
`22 A. These definitions are definitions
`23 I've used in developing my understanding of the
`24 economics of commercial success as a term of art
`
`Golkow Technologies, Inc.
`
`Page 8 (26 - 29)
`
`

`

`Ivan T. Hofmann, CPA/CFF, CLP
`Page 30
`
` 1 in an obviousness inquiry. I can't really
` 2 pinpoint a specific source. It's a collection
` 3 of my knowledge and experience having been asked
` 4 to study this economic issue in a dispute
` 5 setting on a number of occasions over the years.
` 6 Q. So fair to say that you used
` 7 these definitions or similar definitions in past
` 8 cases that you've worked on?
` 9 A. I think that's fair.
`10 Q. Do you agree that commercial
`11 success may provide objective evidence of
`12 nonobviousness?
`13 A. Depending on the facts and
`14 circumstances, it's, as I understand it, one
`15 economic factor that may provide evidence of
`16 nonobviousness, depending on the facts and
`17 circumstances and the application of thorough
`18 and thoughtful analysis.
`19 Q. Well, put another way, evidence
`20 of commercial success can be relevant on the
`21 issue of obviousness; correct?
`22 A. It can be. It certainly isn't
`23 necessarily so.
`24 Q. Do you agree that the law
`
`Page 31
` 1 presumes that an idea would have been brought to
` 2 market sooner in response to market forces if it
` 3 had been obvious to persons skilled in the art?
` 4 MR. WHITE: Objection. Form.
` 5 THE WITNESS: So I think that
` 6 that's kind of a description of the
` 7 framework, as I understand it, as to why
` 8 the Graham factors include commercial
` 9 success as an economic consideration with
`10 respect to nonobviousness.
`11 Of course, it's important in
`12 studying that question that the facts and
`13 circumstances actually support economic
`14 evidence that ties the commercial
`15 performance to the asserted claims and
`16 that there aren't other extraneous issues
`17 involved in the commercial performance of
`18 a product.
`19 BY MR. ZEGGER:
`20 Q. Now, in Footnote 23, you cite to
`21 a text on patent valuation; is that right?
`22 A. I do.
`23 Q. So did you rely upon a text on
`24 patent valuation to get some of your
`
`Page 32
` 1 understanding of the definition for "commercial
` 2 success"?
` 3 A. I would -- I would say it
` 4 differently.
` 5 I mean, I think that this
` 6 citation is just to provide some context to the
` 7 concept of a blocking patent. I think my
` 8 understanding of blocking patents is not limited
` 9 to this particular publication, but is informed
`10 by case law and the work that I've done over
`11 many years in the areas of the economics of the
`12 role that patents play in protect