`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ARGENTUM PHARMACEUTICALS LLC
`Petitioner
`
`v.
`
`ALCON RESEARCH, LTD.
`Patent Owner
`
`
`Patent No. 8,268,299
`Issue Date: September 18, 2012
`Title: SELF PRESERVED AQUEOUS PHARMACEUTICAL COMPOSITIONS
`
`
`
`Inter Partes Review No. IPR2017-01053
`
`
`
`PETITIONER’S RESPONSE TO ALCON RESEARCH, LTD.’S MOTION
`FOR OBSERVATIONS ON THE DEPOSITION OF PETITIONER’S
`EXPERT JOHN C. STAINES, JR.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner Argentum Pharmaceuticals LLC (“Petitioner”) hereby responds to
`
`Alcon Research Ltd.’s (“Alcon”) motion for observations on the deposition of
`
`Petitioner’s expert John C. Staines, Jr. (Paper 45, hereafter “Mot.”). Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756 at 48767-68 (August 14, 2012).
`
`Observation #1: Alcon’s assertion that Mr. Staines’ understanding of the
`
`’299 patent undermines his opinions regarding Travatan Z’s sales as a successor
`
`product misapprehends the record. Mr. Staines responded to Dr. Grabowski’s
`
`analysis which focused on Travatan Z’s alleged commercial success. As Mr.
`
`Staines testified, he did not consider use of the ’299 patent for other products
`
`because he was unware of such uses. EX2168, 87:1-6.
`
`Observation #2: Alcon’s assertions misapprehend Mr. Staines’ deposition
`
`testimony relative to his declaration and his deposition testimony. Mr. Staines’
`
`declaration states in full “While extrapolations of past trends are subject to
`
`uncertainty, the 2001 to 2006 sales trend observed for Travatan® in this case is
`
`sufficiently compelling to conclude that Travatan®’s 2007 to 2010 (and 2011)
`
`sales absent Travatan Z® would have been much closer to the actual
`
`Travatan®/Travatan Z® sales than to Dr. Grabowski’s untenable no-growth
`
`assumption, which implies that Travatan Z® generated far more Travatan®
`
`cannibalization, and far fewer incremental sales then Dr. Grabowski’s analysis
`
`implies.” EX1094, ¶42. Mr. Staines also testified that with respect to the linear
`
`
`
`1
`
`
`
`extrapolation for the Travatan franchise sales from 2006 to 2011 that “As I said,
`
`the predictions are never 100 percent accurate, but it's really close to -- very close
`
`to what the actual sales were for those and a lot closer than Dr. Grabowski's
`
`assumption, a lot closer than Dr. Grabowski's assumption.” EX2168, 91:12-17.
`
`He also explained that “to ignore that right up until Travatan Z came on the market
`
`that there was no abating in the increase, Dr. Grabowski's analysis can't be relied
`
`on.” EX2168, 94:14-16. Additionally, to further support his analysis based on the
`
`“sufficiently compelling” five and one-half years sales trend of Travatan alone
`
`from 2001 to 2006, Mr. Staines offered an alternative log extrapolation. See
`
`EX1094, Ex. C (dashed blue line).
`
`Observation #3: Alcon’s assertion that Mr. Staines’ deposition testimony
`
`contradicts Petitioner’s argument is misplaced. Petitioner’s reply references Mr.
`
`Staines’ declaration at paragraphs 46-55 (Paper 35 at 27), which do not rely on
`
`calculation errors to support their conclusion. See, e.g., EX1094, ¶48 (discussing
`
`Dr. Grabowski’s use of wholesale sales not taking into account non-invoice sales
`
`allowances); ¶50 (failure to provide net sales revenues); ¶47 (contrasting dollar
`
`sales for Travatan Z with unit sales); ¶ 52 (strong suggestion that “Alcon has
`
`provided significant rebates to insurers”).
`
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`Dated: May 25, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /Michael R. Houston/
`Michael Houston
`Registration No. 58,486
`FOLEY & LARDNER LLP
`321 North Clark Street, Suite 2800
`Chicago, Illinois 60654
`Telephone: 312-832-4500
`Facsimile: 312-832-4700
`mhouston@foley.com
`
`Counsel for Petitioner
`Argentum Pharmaceuticals LLC
`
`
`
`3
`
`
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONER’S RESPONSE TO ALCON RESEARCH, LTD.’S MOTION
`
`FOR OBSERVATIONS ON THE DEPOSITION OF PETITIONER’S
`
`EXPERT JOHN C. STAINES, JR. was served on May 25, 2018, on Counsel for
`
`Patent Owner via electronic mail to the following:
`
`dkrinsky@wc.com
`
`csuarez@wc.com
`
`TravZ-IPR@wc.com
`
`
`
`
`
`
`
`
`
`
`By: /Michael R. Houston/
`Michael Houston
`Registration No. 58,486
`Counsel for Petitioner
`
`
`
`
`
`Dated: May 25, 2018
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
