fIN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`WARNER CHILCOTT COMPANY, LLC
`AND QUALICAPS CO., LTD.,
`
`
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC.
`
`
`
`WARNER CHILCOTT COMPANY, LLC
`AND QUALICAPS CO., LTD.,
`
`
`
`
`
`
`Plaintiffs,
`
`Defendant.
`
`Plaintiffs,
`
`v.
`
`
`
`
`
`Civil Action No. 2:15-cv-1471-JRG-RSP
`
`
`
`
`
`
`
`
`
`
`Civil Action No. 2:15-cv-1740-JRG-RSP
`
`
`MYLAN PHARMACEUTICALS, INC.,
`MYLAN LABORATORIES LIMITED,
`AND MYLAN, INC.,
`
`
`Defendants.
`
`
`
`
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`MYLAN LABORATORIES LIMITED, AND MYLAN INC.’S
`AMENDED NOTICE OF VIDEOTAPED DEPOSITION OF
`REPRESENTATIVE(S) OF QUALICAPS CO., LTD.
`PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 30(B)(6)
`
`PLEASE TAKE NOTICE that Defendants Mylan Pharmaceuticals Inc., Mylan
`
`Laboratories Ltd. and Mylan Inc. (collectively “Mylan”) will take the deposition of Plaintiff
`
`Qualicaps Co., Ltd. (“Qualicaps”), commencing on February 20, 2017, and continuing thereafter
`
`until completed, at a mutually convenient location. The deposition will be taken pursuant to the
`
` 1
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 1
`
`
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`WARNER CHILCOTT COMPANY, LLC
`AND QUALICAPS CO., LTD.,
`
`
`
`v.
`
`TEVA PHARMACEUTICALS USA, INC.
`
`
`
`WARNER CHILCOTT COMPANY, LLC
`AND QUALICAPS CO., LTD.,
`
`
`
`
`
`
`Plaintiffs,
`
`Defendant.
`
`Plaintiffs,
`
`v.
`
`
`
`
`
`Civil Action No. 2:15-cv-1471-JRG-RSP
`
`
`
`
`
`
`
`
`
`
`Civil Action No. 2:15-cv-1740-JRG-RSP
`
`
`MYLAN PHARMACEUTICALS, INC.,
`MYLAN LABORATORIES LIMITED,
`AND MYLAN, INC.,
`
`
`Defendants.
`
`
`
`
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`MYLAN LABORATORIES LIMITED, AND MYLAN INC.’S
`AMENDED NOTICE OF VIDEOTAPED DEPOSITION OF
`REPRESENTATIVE(S) OF QUALICAPS CO., LTD.
`PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 30(B)(6)
`
`PLEASE TAKE NOTICE that Defendants Mylan Pharmaceuticals Inc., Mylan
`
`Laboratories Ltd. and Mylan Inc. (collectively “Mylan”) will take the deposition of Plaintiff
`
`Qualicaps Co., Ltd. (“Qualicaps”), commencing on February 20, 2017, and continuing thereafter
`
`until completed, at a mutually convenient location. The deposition will be taken pursuant to the
`
` 1
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 1
`
`
`
`Federal Rules of Civil Procedure before an officer and reporter authorized to administer oaths.
`
`The deposition will be videotaped and recorded by stenographic means.
`
`
`
`As required by Rule 30(b)(6) of the Federal Rules of Civil Procedure, Qualicaps shall
`
`designate one or more officers, directors, managing agents, employees, or other sufficiently
`
`knowledgeable persons who consents to testify on its behalf with respect to each of the matters
`
`set forth in Exhibit A. The persons so designated shall be required to testify as to each of those
`
`matters known or reasonably available to Qualicaps. Individuals designated by Qualicaps as a
`
`witness under Rule 30(b)(6) shall be identified by name and title no later than two (2) weeks
`
`prior to the date on which the deposition shall commence.
`
`PLEASE TAKE FURTHER NOTICE that, pursuant to Rule 30(b)(6), Qualicaps is
`
`required to produce the documents listed in Exhibit B at or before the noticed deposition herein.
`
`The deponent(s) is/are further required to produce prior to the deposition any and all information
`
`or material previously requested in discovery, but not yet produced.
`
`
`
`Defendants reserve the right to amend or supplement this notice and these exhibits as
`
`more information becomes available to Defendants during the course of discovery.
`
` 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 2
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Jonathan D. Olinger
`Mitchell G. Stockwell
` Georgia Bar No. 682912
`D. Clay Holloway
` Georgia Bar No. 363296
`Jonathan D. Olinger
` Georgia Bar No. 122055
`Amanda N. Brouillette
` Georgia Bar No. 880528
`KILPATRICK, TOWNSEND & STOCKTON LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, Georgia 30309
`(404) 815-6500
`(404) 815-6555 (fax)
`mmstockwell@kilpatricktownsend.com
`mcholloway@kilpatricktownsend.com
`mjolinger@kilpatricktownsend.com
`mabrouillette@kilpatricktownsend.com
`
`S. Calvin Capshaw
` Texas Bar No. 03783900
`Elizabeth L. DeRieux
` Texas Bar No. 05770585
`CAPSHAW DERIEUX LLP
`114 E. Commerce Avenue
`Gladewater, Texas 75647
`(903) 845-5770
`ccapshaw@capshawlaw.com
`ederieux@capshawlaw.com
`
`COUNSEL FOR DEFENDANTS MYLAN
`PHARMACEUTICALS, INC., MYLAN
`LABORATORIES LIMITED, AND
`MYLAN, INC.
`
`
` 3
`
`
`
`
`
`Dated: March 13, 2017.
`
`
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 3
`
`
`
`EXHIBIT A
`
`DEFINITIONS
`
`The “’180 patent” shall mean U.S. Patent No. 6,649,180.
`
`“All” means any, all and each; “each” means all and each; and “any” means all
`
`1.
`
`2.
`
`and each.
`
`3.
`
`The terms “and” and “or” shall be construed either disjunctively or conjunctively
`
`as necessary to bring within the scope of these discovery requests any information that might
`
`otherwise be construed to be outside their scope.
`
`4.
`
`“Concerning” means, without limitation, alluding to, bearing upon, constituting,
`
`containing, discussing, describing, evidencing, identifying, mentioning, in connection with,
`
`pertaining to, referring to, relating to, respecting, regarding, responding to, or in any way
`
`factually or logically relevant to the matter described.
`
`5.
`
` “Defendants” shall mean Mylan Pharmaceuticals Inc., Mylan Laboratories
`
`Limited, and Mylan Inc.
`
`6.
`
`“Document” shall have the full meaning ascribed under the Federal Rules of Civil
`
`Procedure and shall mean, without limitation, any written, recorded, or graphic material of any
`
`kind within your possession, custody, or control, whether in paper or electronic form. The term
`
`includes, but is not limited to, all agreements; the full meaning ascribed under the Federal Rules
`
`of Civil Procedure and shall mean, without limitation, any written, recorded, or graphic material
`
`of any kind within your possession, custody, or control, whether in paper or electronic form. The
`
`term includes, but is not limited to, all agreements; contracts; letters; telegrams; interoffice
`
`communications; facsimile transmissions; memoranda; reports; records; studies; instructions;
`
` 1
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 4
`
`
`
`specifications; handwritten or typewritten notes; notebooks, scrapbooks; diaries; calendars;
`
`plans; drawings; sketches; diagrams; minutes of meetings, conferences and telephone or other
`
`conversations; photocopies; charts; graphs; descriptions; drafts; ledgers; financial statements or
`
`reports; invoices; bills; microfilm, microfiche, tape, disk, or diskette recordings; computer
`
`records and computer printouts. The term “document” includes electronically stored data from
`
`which information can be obtained either directly or by translation through detection devices or
`
`readers (any such document is to be produced in a reasonably legible and usable form) —
`
`including, without limitation, email stored in servers and on hard disks of personal computers.
`
`The term “document” also includes the original document (or an identical copy thereof if the
`
`original is not available) and all copies that differ in any respect from the original as a result of
`
`any notation, symbol, lettering, underlining, marking or other information appearing thereon, and
`
`all attachments thereto, and also includes English translations of documents requested herein
`
`whenever such translations exist in whole or in part for a document or portion thereof.
`
`7.
`
`Each singular word shall include its plural and each plural shall include its
`
`singular as necessary to bring within the scope of these discovery requests any information that
`
`might otherwise be construed to be outside their scope.
`
`8.
`
`9.
`
`limitation.
`
`10.
`
`11.
`
`“FDA” shall mean the United States Food and Drug Administration.
`
`“Include” or “including” denotes a portion of a larger whole and is used without
`
`The “patent-in-suit” shall mean the ’180 patent.
`
`“Person(s)” means any individual, corporation, firm, partnership, governmental
`
`body, incorporated or unincorporated association, and any other legal or commercial entities.
`
` 2
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 5
`
`
`
`The acts and knowledge of a “person” as used herein are also defined to embrace acts and
`
`knowledge of directors, employees, officers, directors, agents, representatives, consultants, or
`
`other persons (including attorneys) acting for or on behalf of the “person.”
`
`12.
`
`“Plaintiff,” “You,” or “Your” shall mean Qualicaps and all parents, subsidiaries,
`
`and affiliates thereof, all divisions, predecessors, successors, and assigns thereof, and all
`
`directors, officers, employees, agents, consultants, representatives, or persons acting or
`
`purporting to act on behalf of, or under the control of, any of the foregoing entities.
`
`13.
`
`The phrase “Prior Art” encompasses all patents, publications, references, or
`
`events allegedly falling within any of the categories set forth in 35 U.S.C. §§ 102 and 103 that
`
`relate to the subject matter of the patent-in-suit, even if You contend that it does not anticipate or
`
`render obvious the inventions claimed in the patent-in-suit.
`
`14.
`
` “Prosecution” means the proceedings before any patent office, either the United
`
`States Patent and Trademark Office or a foreign patent office, in connection with the filing,
`
`issuance, reexamination, reissue or review of, or opposition to, a particular patent.
`
`15.
`
`“Refer” or “relate,” as used herein, includes, but is not limited to, the following
`
`meanings (in whole or in part): refer to, relate to, concern, evidence, with respect to, constitute,
`
`with regards to, mention, reflect, involve, discuss, describe, respond to, bear upon, in connection
`
`with, identify, pertain to, or is in any way logically or factually relevant to the matter described
`
`in the request.
`
`16.
`
`“Related Applications or Related Patents” shall mean every foreign or U.S. patent
`
`application (e.g., provisional, continuation, continuation-in-part, divisional, reexamination
`
`proceedings, reissue, or inventor’s certificate) whether abandoned, pending, or published, and
`
` 3
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 6
`
`
`
`every foreign or domestic patent granted based thereon, that directly or indirectly claims any
`
`priority to the patent-in-suit (or applications resulting in the patent-in-suit), or to which the
`
`patent-in-suit claims priority.
`
`17.
`
`The phrase “subject matter,” when used in relation to a patent, means all products,
`
`processes, technology, implementation, uses, and other matter covered by one or more claims of
`
`that patent.
`
`The “’180 patent”
`
`TOPICS FOR EXAMINATION
`
`1.
`
`The facts concerning the conception, research, development, design, manufacture,
`
`reduction to practice, and diligence between conception and reduction to practice of the
`
`inventions claimed in the patent-in-suit or any Related Applications or Related Patents.
`
`2.
`
`The facts concerning the publication by any of the named inventors of the patent-
`
`in-suit or any other Related Applications or Related Patents of any paper, publication, or article
`
`relating to any of the inventions claimed in the patent-in-suit or any Related Applications or
`
`Related Patents.
`
`3.
`
`The facts concerning each of the named inventors’ of the patent-in-suit work on
`
`any hard capsule product.
`
`4.
`
`The facts concerning the first offer for sale, public use, and first sale of any
`
`product that embodied any of the inventions claimed in the patent-in-suit or any Related
`
`Applications or Related Patents.
`
` 4
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 7
`
`
`
`5.
`
`The facts concerning each claim of the patent-in-suit that Qualicaps contends that
`
`it practices, including the identification of any product that incorporates, practices, or embodies
`
`that claim.
`
`6.
`
`The facts concerning the development of any products that incorporate, practice,
`
`or embody any aspect of the subject matter claimed in the patent-in-suit, and the facts concerning
`
`any failed attempt to develop a product that, if successful, would incorporate, practice, or
`
`embody any aspect of the subject matter claimed in the patent-in-suit or any Related
`
`Applications or Related Patents.
`
`7.
`
`The facts and circumstances surrounding all communications between Qualicaps
`
`and any distributors and/or trade partners regarding the design, development, first sale, and/or
`
`first offer for sale of any product that embodies or embodied one or more of the inventions
`
`claimed in the patent-in-suit or any Related Applications or Related Patents.
`
`8.
`
`The facts and circumstances surrounding any validity, infringement, or Prior Art
`
`searches or investigations, performed by or on behalf of Qualicaps, relating to the patent-in-suit
`
`or any Related Applications or Related Patents.
`
`9.
`
`The facts concerning the filing and Prosecution of the patent-in-suit or any
`
`Related Applications or Related Patents, and the facts concerning the named inventors’
`
`participation in the filing and Prosecution process.
`
`10.
`
`All communications between Qualicaps and any third party relating to the
`
`validity, scope, or interpretation of the patent-in-suit.
`
`11.
`
`All challenges, assertions, or allegations made by third parties to Qualicaps
`
`regarding the validity or unenforceability of the patent-in-suit.
`
` 5
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 8
`
`
`
`12.
`
`The facts concerning Qualicaps’s ownership and understanding of the scope of
`
`the patent-in-suit, including the facts concerning any assignment, license, or transfer of rights in
`
`the patent-in-suit to any other entity.
`
`13.
`
`The events and circumstances surrounding the sale or use of capsules covered by
`
`the patent-in-suit by any entity other than Warner Chilcott, including the price per capsule or
`
`other compensation for the use of the patented capsule(s).
`
`14.
`
`The factual basis for, and all facts related to, Qualicaps’ Infringement Contentions
`
`and any other contention by Qualicaps that the manufacture, sale, or offer for sale of a generic
`
`product pursuant to Abbreviated New Drug Application (“ANDA”) No. 207826 would infringe
`
`any of the claims of the patent-in-suit.
`
`15.
`
`The benefits or advantages of any technologies claimed in the patent-in-suit over
`
`Prior Art and over any hard capsule product not covered by the patent-in-suit, including but not
`
`limited to any benefits or advantages to consumers.
`
`16.
`
`The identity of any other hard capsule products that are non-infringing substitutes
`
`or alternatives to any hard capsule products that incorporate, practice, or embody any aspect of
`
`the subject matter claimed in the patent-in-suit.
`
`17.
`
`Secondary considerations or objective indicia of non-obviousness, if any, relating
`
`to the patent-in-suit, including, but not limited to, failure by others, long-felt but unmet need,
`
`skepticism of others, praise by others, copying, and unexpected results..
`
`The Development, Introduction, and Promotion of Delzicol®
`
`18.
`
`Qualicaps’s organizational structure as it relates to the claimed subject matter of
`
`the patent-in-suit or any Related Applications or Related Patents, including (1) research and
`
` 6
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 9
`
`
`
`development, (2) engineering and design, (3) manufacture, (4) testing, (5) marketing,
`
`advertising, and promotion, (6) sales, (7) strategic planning, (8) patent and other intellectual
`
`property issues, or (9) licensing.
`
`19.
`
`The facts and circumstances surrounding each of the named inventors’ of the
`
`patent-in-suit work on any mesalamine product.
`
`20.
`
`The facts concerning the clinical development, including research, development,
`
`testing, modification, experimental use, or clinical trials, of any products related to the claimed
`
`subject matter of the patent-in-suit or any Related Applications or Related Patents, including
`
`Delzicol®.
`
`21.
`
`The facts and circumstances surrounding the licensure of the patent-in-suit for the
`
`manufacture of Delzicol®, including Qualicaps’s decision to exclusively license the patent-in-suit
`
`to Warner Chilcott for the manufacture of Delzicol®.
`
`22.
`
`23.
`
`The function of the hard capsule in Delzicol®.
`
`The facts and circumstances surrounding any communications or correspondence
`
`between Qualicaps and the FDA relating to New Drug Application (“NDA”) No. 204412.
`
`General Topics
`
`24.
`
`The identity and location of persons most knowledgeable about each of the
`
`foregoing topics.
`
`25.
`
`The identity and location of all persons consulted by the corporate
`
`representative(s) with respect to each of the foregoing topics.
`
`26.
`
`The identity and location of documents concerning each of the foregoing topics.
`
`Amended Topics (March 13, 2017)
`
` 7
`
`
`
`
`
`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 10
`
`
`
`27.
`
`The identification of all documents and correspondence, including custodian,
`
`location, type of document, relating to Topic No. 21.
`
`28.
`
`29.
`
`The attempts to maintain any and all materials related to Topic Nos. 21 and 27.
`
`The destruction or failure to maintain any and all materials related to Topic Nos.
`
`21 and 27, including but not limited to, the procedures for maintaining such documents or
`
`materials, when such documents or materials were destroyed, when the documents or materials
`
`were last seen, and by whom.
`
`30.
`
`The practice of any party to the agreements referenced in Topic No. 22 as it
`
`pertains to in-bound licensing for the creation, execution, and subsequent maintenance of such
`
`agreements.
`
` 8
`
`
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`
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`
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`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 11
`
`
`
`EXHIBIT B
`
`1.
`
`All documents and things considered, reviewed, or prepared by Qualicaps in the
`
`course of preparing for the Rule 30(b)(6) deposition on the subjects listed above in Exhibit A.
`
` 9
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`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 12
`
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing document was served on counsel for
`
`Plaintiffs via electronic mail on March 13, 2017, as follows:
`
`andrea@wsfirm.com
`claire@wsfirm.com
`wh@wsfirm.com
`gpappas@cov.com
`jelikan@cov.com
`jcobb@cov.com
`mkennedy@cov.com
`
`Counsel for Plaintiffs
`
`/s/ Jonathan D. Olinger
`Jonathan D. Olinger
`
`
`
`
`
`
`
`
`
`10
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`Petitioner Mylan Pharmaceuticals Inc. - Exhibit 1024 - Page 13
`
`
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