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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCK SHARP & DOHME CORP.
`Petitioner
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE
`Patent Owners
`____________
`
`U.S. Patent No. 6,331,415
`
`“Methods of Producing Immunoglobulins, Vectors and
`Transformed Host Cells for Use Therein”
`____________
`
`Inter Partes Review No. 2016-____
`____________
`
`DECLARATION OF MICHAEL H. WIGLER IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,331,415
`
`
`
`Merck Ex. 1070, pg 1541
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`I, Michael H. Wigler, hereby declare and state as follows:
`
`1.
`
`I have been asked by counsel for Merck Sharp & Dohme Corp.
`
`(“Merck”) to submit this declaration in connection with Merck’s petition for inter
`
`partes review of U.S. Patent No. 6,331,415 (“the ’415 patent”), which I am
`
`informed is being filed concurrently with this declaration.
`
`2.
`
`I have no stake in the outcome of this proceeding or any related
`
`litigation or administrative proceedings. I have no financial interest in the
`
`Petitioner, and similarly have no financial interest in the ’415 patent or its owner.
`
`3.
`
`I am one of the named inventors on U.S. Patent No. 4,399,216 (“the
`
`Axel patent”). The method described in the Axel patent is sometimes referred to as
`
`the “Wigler method” because I was the lead author on several scientific papers that
`
`form the basis of the work described in the Axel patent. I have been asked to
`
`explain the technology and the invention embodied in the Axel patent.
`
`II. BACKGROUND
`
`4.
`
`I received a Bachelor of Arts degree in Mathematics from Princeton
`
`University in 1970, a Master of Medical Science degree in Medicine from Rutgers
`
`University in 1972, and a Doctor of Philosophy (Ph.D.) degree in Microbiology
`
`from Columbia University in 1978. I conducted my doctoral research in the
`
`Department of Microbiology at Columbia University.
`
`
`
`
`1
`
`Merck Ex. 1070, pg 1542
`
`
`
`
`
`5.
`
`After my studies, in 1978, I became a Professor of Mammalian Cell
`
`Genetics and Interim Chair of Quantitative Biology at Cold Spring Harbor
`
`Laboratory. In 1988, I became an Adjunct Professor in the Department of
`
`Genetics, College of Physicians and Surgeons at Columbia University. From 2008
`
`to 2014, I was a Foreign Adjunct Professor of Tumor Biology in the Department of
`
`Oncology-Pathology at Karolinska Institutet in Stockholm, Sweden. I still
`
`presently hold my position at Cold Spring Harbor Laboratory.
`
`6.
`
`I have over 35 years of experience in recombinant DNA technology.
`
`In the 1970s and 1980s, my research focused on developing methods for
`
`manipulating mammalian cells for the production of proteins, including pioneering
`
`recombinant gene co-expression and gene transfer techniques.
`
`7.
`
`In addition to the research described below, my research group was
`
`the first to isolate a vertebrate gene using gene transfer techniques and the first to
`
`isolate a human oncogene by this means. Additionally, my laboratory discovered
`
`the involvement of three members of the RAS family in human cancer; pioneered
`
`the use of yeast as a model to explore more complex organisms; co-invented
`
`encoded combinatorial synthesis, which has accelerated the discovery of new drug
`
`candidates; co-invented RDA, a method for comparative genome analysis; and
`
`developed representational genomic approaches
`
`that are used widely
`
`in
`
`genotyping. I have published my research as an author or co-author of over 180
`
`
`
`
`2
`
`Merck Ex. 1070, pg 1543
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`
`
`
`
`referred
`
`journal articles,
`
`including scientific
`
`literature directed
`
`to
`
`the
`
`transformation and expression of eukaryotic genes in mammalian host cells. I am
`
`also a named inventor on over 30 U.S. patents.
`
`8.
`
`I have received several awards and honors for my work, including the
`
`American Business for Cancer Research Award in 1982, the Pfizer Biomedical
`
`Award in 1985, the NIH Outstanding Investigator Award in 1985, the American
`
`Cancer Society Lifetime Research Professorship Award in 1986, and the Double
`
`Helix Medal in 2007. I have also been elected into the National Academy of
`
`Sciences, the American Academy of Microbiology, and the American Academy of
`
`Arts & Sciences.
`
`III. DEVELOPMENT OF MY CO-TRANSFORMATION TECHNIQUE
`
`In 1976, I began the research that would ultimately lead to the Axel
`
`9.
`
`patent.
`
`10. My initial research involved transfecting mouse L cells that were
`
`deficient in thymidine kinase (“tk”) with DNA derived from the herpes simplex
`
`virus-l (“HSV-1”) that encodes for tk. My co-authors and I were able to
`
`demonstrate that transformation with the HSV-1 tk gene restores tk activity in tk-
`
`deficient cells. This allowed us to use tk as a selectable marker, whereby we could
`
`select for host cells that had been successfully transformed by growing them in a
`
`medium containing hypoxanthine, aminopterin and thymidine (“HAT”). This is
`
`
`
`
`3
`
`Merck Ex. 1070, pg 1544
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`
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`
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`because cells that do not express tk are unable to grow in the presence of HAT.
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`The results of this research were published in the journal Cell in 1977: Wigler, M.
`
`et al., Transfer of Purified Herpes Virus Thymidine Kinase Gene to Cultured
`
`Mouse Cells, Cell 11:223-232 (1977) (Ex. 1029).
`
`11.
`
`In 1978, I, along with my co-authors published a second paper in Cell:
`
`Wigler, M. et al., Biochemical Transfer of Single-Copy Eucaryotic Genes Using
`
`Total Cellular DNA as Donor, Cell 14:725-731 (1978) (Ex. 1030). My second
`
`Cell paper expanded upon my earlier work and demonstrated that DNA derived
`
`from sources other than HSV-1 could be used to transfer tk activity to tk deficient
`
`host cells. Among the species that were successfully used as sources of tk DNA
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`were mice, hamsters, chickens, calves, and humans. Based upon our results, we
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`concluded “[t]he method which we have used to transfer the thymidine kinase gene
`
`can, in principle, be applied to any gene for which conditional selection criteria are
`
`available.” Ex. 1030, at 730.
`
`12.
`
`In 1979, I extended my earlier work by demonstrating that a different
`
`gene,
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`the gene for adenine phosphoribosyltransferase (“aprt”), could be
`
`transformed into eukaryotic host cells. This research was published in the
`
`Proceedings of the National Academy of Sciences: Wigler, M. et al., DNA-
`
`Mediated Transfer of
`
`the Adenine Phosphoribosyltransferase Locus
`
`into
`
`Mammalian Cells, Proc. Natl. Acad. Sci. USA, 76:1373-1376 (March 1979) (Ex.
`
`
`
`
`4
`
`Merck Ex. 1070, pg 1545
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`
`
`
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`1031). Our results demonstrated that, like tk, aprt could be used a selectable
`
`marker. Id. at 1376. These results also helped reinforce my conclusion that my
`
`transformation technique was generally applicable to any gene for which selection
`
`criteria existed:
`
`The method employed to transfer both the tk and aprt
`
`genes can in principle be applied to any gene for which
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`appropriate selective conditions and recipient cells exist.
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`We have, for example, recently succeeded in transferring
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`the gene coded for a methotrexate-resistant folate
`
`reductase gene (14) to wild-type cells (unpublished
`
`results). The generality of these observations indicates
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`that transformation will facilitate the dissection of
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`complex cellular phenotypes in eukaryotic cells.
`
`Id.
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`13. As noted above, I concluded in 1979 that my transformation technique
`
`was generally applicable to any gene for which selection criteria existed; however,
`
`there are many genes for which no selection criteria exist. Thus, I sought to further
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`extend my research by attempting co-transformation, or introduction of two or
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`more exogenous genes into a single eukaryotic host cell. By using co-
`
`transformation, one gene for which there was selection criteria could be used as a
`
`
`
`
`5
`
`Merck Ex. 1070, pg 1546
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`
`
`
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`selectable marker while the other gene(s) were not required to have any selection
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`criteria. Thus, co-transformation allowed us to extend our transformation
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`techniques to any gene or genes, regardless of whether selection criteria exist.
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`14. My first paper on co-transformation was published in Cell in 1979:
`
`Wigler, M. et al., Transformation of Mammalian Cells with Genes from
`
`Prokaryotes and Eukaryotes, Cell, 16:777-785 (1979) (Ex. 1032). In my 1979 Cell
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`paper, I, along with my co-authors, performed three experiments in which we co-
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`transformed the gene for tk with three other DNA segments, the bacteriophage
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`ΦX174, the bacterial plasmid pBR322, and the cloned chromosomal rabbit β-
`
`globin genes. Id. at 777. Our results demonstrated successful co-transformation in
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`eukaryotic cells of the tk gene along with each of these three additional DNA
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`segments. Based on these results, we concluded that the co-transformation
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`technique was generally applicable: “The stable transfer of ΦX DNA sequences to
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`mammalian cells serves as a model system for the introduction of defined genes for
`
`which no selective criteria exist…. Although preliminary, these studies indicate
`
`the potential value of co-transformation systems in the analysis of eucaryotic gene
`
`expression.” Ex. 1032 at 784.
`
`15.
`
`I, along with my co-authors, published two additional papers in 1979
`
`describing additional research on my co-transformation technique. The first paper
`
`is Wigler, M. et al., Transformation of Mammalian Cells with Prokaryotic and
`
`
`
`
`6
`
`Merck Ex. 1070, pg 1547
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`
`
`
`
`Eukaryotic Genes, in Eucaryotic Gene Regulation Proc. Inc.-UCLA Symposia, R.
`
`Axel and T. Maniatis, Eds, Academic Press, 457-475 (1979) (Ex. 1033). In this
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`paper, we published the results of co-transformation of the tk gene and the rabbit β-
`
`globin gene. Id. at 464-469. Our results demonstrated that the rabbit β-globin
`
`gene is successfully transcribed into mRNA. Id. at 467-468, 474. The second
`
`paper is Wold, B. et al., Introduction and Expression of the Rabbit β-globin Gene
`
`in Mouse Fibroblasts, Proc. Natl. Acad. Sci. USA, 76:5684-5688 (1979) (Ex.
`
`1034). In this paper, I, along with my co-authors, provide further experimental
`
`results demonstrating that co-transformation of the tk and rabbit β-globin gene
`
`results in production of mRNA for rabbit β-globin. Id. at 5686-5688.
`
`IV. THE AXEL PATENT
`
`16. The research described above and other research forms the basis for
`
`the Axel patent. The Axel patent is entitled “Processes for Inserted DNA into
`
`Eucaryotic Cells and for Producing Proteinaceous Materials.” I am a named
`
`inventor on the Axel patent, along with Dr. Richard Axel and Dr. Saul J.
`
`Silverstein. Drs. Axel and Silverstein co-authored each of the papers described
`
`above.
`
`17. We filed the application that ultimately became the Axel patent on
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`February 25, 1980 and the Patent Office issued the Axel patent on August 16,
`
`1983.
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`
`
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`7
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`Merck Ex. 1070, pg 1548
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`
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`18. As the Axel patent explains in the two sentences of the Abstract, the
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`patent broadly describes the co-transformation process that I helped develop: “The
`
`present invention relates to processes for inserting DNA into eucaryotic cells,
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`particularly DNA which includes a gene or genes coding for desired proteinaceous
`
`materials for which no selection criteria exist. The insertion of such DNA
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`molecules is accomplished by cotransforming eucaryotic cells with such DNA
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`together with a second DNA which corresponds to a gene coding for a selectable
`
`marker.” Ex. 1006 at Abstract. The reference to “a gene or genes coding for
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`desired proteinaceous materials for which no selection criteria exist” demonstrates
`
`that I recognized in 1980 that my co-transformation technique could be used to
`
`introduce more than one desired gene into a single host cell, thereby allowing the
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`expression of more than one “desired proteinaceous material,” i.e., more than one
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`protein of interest, in a single host cell.
`
`19. With respect to our decision to use eukaryotic host cells, the Axel
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`patent explains that eukaryotic host cells provide a number of advantages over
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`prokaryotic host cells when being used to express eukaryotic proteins, including
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`antibodies:
`
`The present invention provides major advances over
`
`bacterial systems for future use in the commercial
`
`preparation of proteinaceous materials particularly
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`
`
`
`8
`
`Merck Ex. 1070, pg 1549
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`
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`
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`proteins of eucaryotic origin such as interferon protein,
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`antibodies, insulin, and the like. Such advantages include
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`the ability to use unaltered genes coding for precursors
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`for such proteinaceous materials. After cellular
`
`synthesis, the precursor can be further processed or
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`converted within the eucaryotic cell to produce the
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`desired molecules of biological significance.
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`Id. at 2:33-41; see also id. at 7:51-8:6. Thus, we recognized in 1980 that the use of
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`eukaryotic host cells could expand the number of eukaryotic proteins, such as
`
`interferon, insulin and antibodies, that could be recombinantly expressed even if
`
`the amino acid sequences of these proteins were not known. Id.
`
`20. The Axel patent defines “cotransformation” as “the process for
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`carrying out transformations of a recipient cell with more than one different gene.
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`Cotransformation includes both simultaneous and sequential changes in the
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`genotype of a recipient cell mediated by the introduction of DNA corresponding to
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`either unlinked or linked genes.” Id. at 4:23-28. The reference to “unlinked or
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`linked genes” means that the genes coding the selectable marker and the protein of
`
`interest could be on the same DNA molecule (linked) or different DNA molecules
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`(unlinked). Moreover, if more than one protein of interest is to be expressed (see
`
`
`
`
`9
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`Merck Ex. 1070, pg 1550
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`
`
`
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`below), the genes coding for these proteins of interest can likewise be on the same
`
`DNA molecule (linked) or different DNA molecules (unlinked).
`
`21.
`
`In describing the process of co-transformation, the Axel patent uses a
`
`nomenclature whereby “DNA I” refers to the DNA “coding for the desired
`
`proteinaceous material” and “DNA II” refers to the DNA “coding for [a] selectable
`
`marker.” Id. at Fig. 1. Under the Axel patent’s transformation process, DNA I and
`
`DNA II are both transformed into a single host cell (id. at 5:51-57), the host cell is
`
`then grown in conditions “such that the only cells which survive or are otherwise
`
`altered are those which have required [sic] the selectable phenotype” (id. at 4:68-
`
`5:2) and the “desired proteinaceous material” is then “recovered from the cells
`
`using techniques well known in the art.” Id. at 6:21-23. This process is depicted in
`
`Figure 1 of the Axel patent:
`
`
`
`
`10
`
`Merck Ex. 1070, pg 1551
`
`
`
`
`
`
`
`22.
`
`I recognized that the co-transformation process described by the Axel
`
`patent was generally applicable to virtually any type of desired protein. Thus,
`
`DNA I is not limited to any particular gene or groups of genes. Rather, the Axel
`
`patent explains that the co-transformation process is useful for any gene for which
`
`there is no selectable marker: “The present invention is especially useful in
`
`
`
`
`11
`
`Merck Ex. 1070, pg 1552
`
`
`
`
`
`connection with the insertion into eucaryotic cells of foreign DNA which includes
`
`genes which code for proteinaceous materials not associated with selectable
`
`phenotypes.” Id. at 5:15-19.
`
`23. Although the Axel patent does not limit the types of proteins that can
`
`be expressed using the co-transformation technique, it does identify several
`
`exemplary proteins that are suitable for expression using the co-transformation
`
`technique: “Examples of proteinaceous materials, the genes for which may be
`
`inserted into and expressed by eucaryotic cells using the cotransformation process
`
`include interferon protein, insulin, growth hormones, clotting factors, viral antigens,
`
`enzymes and antibodies.” Id. at 5:24-28. The proteins listed above were
`
`specifically identified because they share certain characteristics. For example,
`
`with the exception of viral antigens, they are all secreted by eukaryotic cells. This
`
`list reflects the eukaryotic proteins that at the time the Axel patent was filed were
`
`believed to be most well-suited for the co-transformation technique that I helped
`
`develop.
`
`24. As noted above, the Axel patent specifically identifies “antibodies” as
`
`one type of protein that could be expressed using the co-transformation technique
`
`that I helped develop. In fact, “antibodies” are referenced throughout the
`
`specification (id. at 2:32-36, 2:61-66, 3:31-36, 5:24-28, 7:34-42) and the Axel
`
`
`
`
`12
`
`Merck Ex. 1070, pg 1553
`
`
`
`
`
`patent contains several claims that are directed to producing antibodies using the
`
`co-transformation technique. Id. at claims 7, 23, 29, 37, 52, and 60.
`
`25.
`
`I understand that Genentech has previously argued that the reference
`
`to “antibodies” in the Axel patent refers to the heavy chain or the light chain, and
`
`not a complete immunoglobulin molecule. This is not correct. The reference to
`
`“antibodies” in the Axel patent refers to a complete immunoglobulin molecule.
`
`Indeed, this was the well accepted meaning of the term “antibodies” when we filed
`
`the Axel patent in 1980.
`
`26.
`
`In 1980, I was aware that antibodies were a multimeric protein
`
`typically made up of two heavy and two light chains. Thus, when the Axel patent
`
`refers to producing “antibodies,” DNA I would necessarily include the genes
`
`encoding for both the heavy and light chains. This is consistent with the statement
`
`in the Abstract that “a gene or genes coding for desired proteinaceous materials”
`
`may be inserted into a single host cell.
`
`27. Another aspect of the Axel patent is the use of the co-transformation
`
`process to insert multiple copies of the genes encoding the “desired proteinaceous
`
`materials” into the eukaryotic host cell. Id. at 3:43-61. The Axel patent explains
`
`that “[b]y inserting multiple copies of genes coding for desired materials into
`
`eucaryotic cells according to either of these approaches, it is possible to produce
`
`eucaryotic cells which yield desired materials in high concentrations and which can
`
`
`
`
`13
`
`Merck Ex. 1070, pg 1554
`
`
`
`
`
`be grown in culture to produce such materials in quantities not obtainable with
`
`conventional technology.” Id. at 3:62-68. The teaching in the Axel patent that
`
`multiple copies of DNA I and DNA II may be inserted into a single host cell has
`
`nothing to do with whether more than one protein of interest can be expressed in a
`
`single host cell. The technique of inserting multiple copies of DNA I and DNA II
`
`into a host cell does not change the genes contained on DNA I and DNA II. Thus,
`
`for example, if the “desired proteinaceous materials” were “antibodies” and one
`
`wanted to insert multiple copies of DNA I and DNA II into a eukaryotic host cell,
`
`DNA I would still contain the genes for both the heavy and light chains.
`
`V. THE CO-TRANSFORMATION TECHNIQUE DESCRIBED IN THE
`AXEL PATENT HAS BEEN WIDELY USED
`
`28. The co-transformation process described by the Axel patent has been
`
`widely adopted by both researchers and industry. Shortly after the Axel patent
`
`issued, an article about the Axel patent was published in Science. Referring to the
`
`co-transformation process, the article notes that “the procedures developed by Axel
`
`and his colleagues are being used extensively in basic research.” Jeffrey L. Fox,
`
`Columbia Awarded Biotechnology Patent, Science 221(4614):933 (Sept. 2, 1983)
`
`(Ex. 1058) at 933. The article demonstrates, consistent with my description of the
`
`patent, that researchers recognized in 1983 that the co-transformation technique
`
`could be used to insert multiple genes of interest in a single host cell: “This
`
`patent* [U.S. patent 4,399,216] describes a process called cotransformation
`
`
`
`
`14
`
`Merck Ex. 1070, pg 1555
`
`
`
`
`
`whereby two or more unrelated genes are moved simultaneously and integrated
`
`stably into mammalian cells growing in vitro.” Id. at 933. The reference to “two
`
`or more” genes refers to the gene for the selectable marker plus one or more genes
`
`encoding the proteins of interest. Thus, it was recognized in 1983, that the co-
`
`transformation technique of the Axel patent could be used to express multiple
`
`proteins of interest in a single host cell.
`
`29. The significance of the co-transformation technique described by the
`
`Axel patent is also demonstrated by the number of citations for the papers that
`
`form the basis of the Axel patent. The citation trends show that the co-
`
`transformation technique approximately 175 times per year at its peak. Colaianni,
`
`A. et al, Columbia University’s Axel Patents: Technology Transfer and
`
`Implications for the Bayh-Dole Act, The Milbank Quarterly, Vol. 87-3:683-715
`
`(2009) (Ex. 1059) at 689. The citations trends for my 1977 Cell paper show that it
`
`rapidly became a well-cited paper with over 60 citations for eight consecutive
`
`years in the 1980s. Id. My 1979 Cell paper has been cited even more frequently
`
`with over 60 citations for eleven consecutive years in the 1980s and early 1990s.
`
`Id.
`
`30. The Axel patents were also extensively licensed to the industry where
`
`the co-transformation technique was used to make several drugs, including several
`
`monoclonal antibody drug products. Among the companies that licensed the Axel
`
`
`
`
`15
`
`Merck Ex. 1070, pg 1556
`
`
`
`patent are Amgen, Abbott, Genzyme and Novartis. Id. at 690, Table 1. The
`
`CO-
`
`transformation technique described in the Axel patent has been used to make
`
`numerous antibody products, including Humira® (adalimumab), Amevive®
`
`(alefacept), Zevalin® (ibritumomab tiuxetan), Enbrel® (etanercept) and Simulect
`
`(basiliximab). Columbia, Co-transformation, Commercialization & Controversy
`
`The Axel Patent Litigation, Harvard Journal of Law & Technology, Vol. 17-2:583
`
`618 (2004) (Ex. 1041); Ex. 1059, at 700 and Table 1. In total, the Axel patent
`
`family has been reported to have generated $790 million in royalties. Ex. 1059, at
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`683.
`
`VI. CONCLUSION
`
`31.
`
`I declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true,
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`Executed this 28th day of June 2016. I declare under penalty of
`
`perjury that the foregoing is true and correct.
`
`4 M
`
`I (yWl// ^
`
`ichael H. Wigler
`
`16
`
`Merck Ex. 1070, pg 1557
`
`
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