Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 1 of 224 PageID #: 9971
`1184
`
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`:
`
`Civil Action
`
`ELAN PHARMA INTERNATIONAL
`LIMITED,
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`::
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`::
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`::
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`::
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`Plaintiff,
`
`v.
`ABRAXIS BIOSCIENCE INC.,
`Defendant.
`
`No. 06-438-GMS
`
`:
`- - -
`Wilmington, Delaware
`Monday, June 9, 2008
`8:30 a.m.
`SIXTH DAY OF TRIAL
`-
`- -
`BEFORE: HONORABLE GREGORY M. SLEET, Chief Judge,
`and a Jury
`
`APPEARANCES:
`JOHN G. DAY, ESQ.
`Ashby & Geddes
`-and-
`STEPHEN SCHEVE, ESQ.,
`LINDA M. GLOVER, ESQ.,
`JEFFREY SULLIVAN, ESQ.,
`LISA A. CHIARINI, ESQ.
`ROBERT RIDDLE, ESQ., and
`PAUL FEHLNER, ESQ.
`Baker Botts LLP
`(Houston, TX)
`-and-
`GREGORY BOKAR, ESQ.
`Counsel - Elan Drug Delivery
`Counsel for Plaintiff
`
`Actavis - IPR2017-01103, Ex. 1012, p. 1 of 224
`
`
`1184
`
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`:
`
`Civil Action
`
`ELAN PHARMA INTERNATIONAL
`LIMITED,
`
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`::
`
`::
`
`::
`
`::
`
`Plaintiff,
`
`v.
`ABRAXIS BIOSCIENCE INC.,
`Defendant.
`
`No. 06-438-GMS
`
`:
`- - -
`Wilmington, Delaware
`Monday, June 9, 2008
`8:30 a.m.
`SIXTH DAY OF TRIAL
`-
`- -
`BEFORE: HONORABLE GREGORY M. SLEET, Chief Judge,
`and a Jury
`
`APPEARANCES:
`JOHN G. DAY, ESQ.
`Ashby & Geddes
`-and-
`STEPHEN SCHEVE, ESQ.,
`LINDA M. GLOVER, ESQ.,
`JEFFREY SULLIVAN, ESQ.,
`LISA A. CHIARINI, ESQ.
`ROBERT RIDDLE, ESQ., and
`PAUL FEHLNER, ESQ.
`Baker Botts LLP
`(Houston, TX)
`-and-
`GREGORY BOKAR, ESQ.
`Counsel - Elan Drug Delivery
`Counsel for Plaintiff
`
`Actavis - IPR2017-01103, Ex. 1012, p. 1 of 224
`
`
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`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 2 of 224 PageID #: 9972
`1185
`
`Please be
`
`APPEARANCES CONTINUED:
`ELENA C. NORMAN, ESQ., and
`MICHELLE SHERETTA BUDICAK, ESQ.
`Young Conaway Stargatt & Taylor, LLP
`-and-
`MICHAEL A. JACOBS, ESQ.,
`EMILY A. EVANS, ESQ.,
`ERIC S. WALTERS, ESQ.,
`DIANA KRUZE, ESQ., and
`ERIK J. OLSON, ESQ.
`Morrison & Foerster
`(San Francisco, CA)
`Counsel for Defendant
`- - - - - -
`THE COURT:
`Good morning, counsel.
`seated for a moment.
`(Counsel respond "Good morning.")
`THE COURT:
`Mr. Jacobs.
`MR. JACOBS: Thank you, Your Honor. Mr. Scheve
`has signaled an intent to examine Dr. Desai, our first
`witness this morning, about privilege log entries in
`Dr. Desai's notebook.
`We have seen a graphic displayed on the screen
`in which Mr. Scheve would display those privilege log
`entries or notebook pages with privilege redactions on them.
`Mr. Scheve's contention is because the Court has
`decreed that an adverse inference will be drawn from
`Dr. Brittain's related privilege assertions, Elan should be
`able to develop a record that Abraxis asserted the privilege
`over, in this case, Dr. Desai's notebook entries.
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`The two are not parallel. The Court made
`findings with respect to Dr. Brittain in order to even get
`into examining a witness on the stand about topics that bear
`on attorney-client privilege.
`Our position is the Court
`would have to make similar findings.
`We think Mr. Scheve, Elan, should be directed
`not to raise any such issues or any such implication to
`examine Dr. Desai on any topics that bear on attorney-client
`privilege issues during the cross-examination of Dr. Desai.
`THE COURT:
`Okay. Mr. Scheve.
`MR. SCHEVE: Thank you, Your Honor.
`If I could, beforehand, Mr. Day couldn't be here
`today. He says there is a small event going on this
`evening.
`
`He took the day off. Huh?
`THE COURT:
`MR. SCHEVE: Or at least half the day. He is
`dealing with some issues Your Honor may be familiar with.
`THE COURT:
`Indeed.
`Our children's graduation
`from high school.
`MR. SCHEVE: Yes.
`Your Honor, if I may put up a slide, what this
`is about, and there has been a Bench brief filed by Abraxis
`that cites the case authority.
`MR. JACOBS: May we provide that to Your Honor?
`THE COURT:
`Yes.
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`MR. SCHEVE: And that case authority on Page 2,
`Your Honor, if I may quote from, in the first instance, from
`Weinstein's federal evidence, saying, The claim of a
`privilege is not a proper subject of comment by judge or
`counsel. No inferences may be drawn therefrom.
`Then, later on in the Ninth Circuit, they cite
`another case, that there could be no negative inference from
`a defendant witness' claims of attorney-client privilege.
`I raise that because what we did with
`Dr. Brittain is create a privilege log. You will recall, he
`signed an agreement with an attorney named Sipio and was
`providing consultation with Mr. Sipio. Every one of those
`was placed on a privilege log.
`I think the record, and Your Honor will recall,
`the position we urged upon the Court is it would be
`inappropriate for an inference to be drawn from the fact
`that we claimed those are privileged.
`Your Honor has, to this date, said that you will
`allow that inference to be drawn. This is what has occurred
`during discovery, which is the image up here.
`What Abraxis has done, Your Honor, has claimed
`privilege over, quote, results from experiments that they,
`"to" communicate to the counsel. Not reflecting anything
`that was communicated to counsel, or Desai lab notebook
`reflecting information to communicate to patent counsel
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`regarding product composition.
`They have, I don't remember what the number is
`there, it is page after page after page of testimony results
`from the lab notebook that I can't see because they are
`claiming it's privileged.
`I don't understand how they are now going to
`call Dr. Desai, who is going to testify, and be able to
`claim that a lab notebook is privileged when it clearly
`doesn't say, Reflects communication with attorney. This is
`lab results.
`
`My view, Your Honor, is while we think the
`proper ruling, and I say this, Your Honor, because none of
`us want to come back and try this case again, we think it is
`legal error for an inference to be drawn when counsel, when
`Mr. Brittain's gave us those documents, that he consulted
`with Mr. Sipio on, we put them on a privilege log. There
`was never a motion brought to compel. Never a request that
`Your Honor look at it to determine whether, in fact, it was
`privileged.
`
`And now they have asked you, they want a
`negative inference to be drawn from the fact we put it up
`there. If you look at the cases cited in their brief, it's
`error.
`
`But they want to be able to pull Dr. Brittain in
`here tomorrow and go through that.
`I am saying, If that's
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`Your Honor's ruling, why can they make reference to a
`privilege log that's never been reviewed, for which there
`has never been a ruling, and our contention is, as we have
`argued in the past, and I don't mean to rehash, but our view
`is that you can't draw -- there can't be -- what's the right
`word -- a repercussion until there is first a predicate act.
`THE COURT:
`Which motion in limine was this?
`Does anybody remember?
`MR. SCHEVE: They attempted to limit us to
`Mr. Brittain.
`MS. GLOVER: No. 1.
`MR. JACOBS: No. 1.
`THE COURT:
`By Abraxis?
`MR. JACOBS: Correct.
`MR. SCHEVE: If they are going to be able to
`call Dr. Brittain tomorrow and Mr. Jacobs has advised me he
`has got him under subpoena, he would be here today but he is
`taking care of his grandchild, that they are putting him on
`solely to put up that privilege log and argue that there
`must be something there that is being withheld from somebody
`and get a negative inference.
`Our view is, while we don't think it is
`appropriate either way, why should they be allowed to do it
`and then I can't do the same thing? That's just not fair.
`THE COURT:
`Okay.
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`Mr. Jacobs.
`MR. JACOBS: So there are a couple of issues now
`getting rolled up into one. No. 1, we are very comfortable
`with the record on Motion in Limine No. 1. We are very,
`very comfortable with the record, including the observation
`by the Court about the seriousness of the violation that led
`to the ruling on Motion in Limine No. 1.
`No. 2, we can't, in the ten minutes before
`witness' testimony is supposed to start, we can't go through
`each of the privilege log entries and have a reargument
`about these privilege log entries.
`I can tell you several
`things, if it will comfort the Court. We went through each
`of these entries on a one-by-one basis with Dr. Desai to
`make sure that the privilege was properly being asserted.
`We did it because there was back and forth between counsel
`about the privilege log entries.
`Dr. Desai's notebooks relate to a wide variety
`of topics, some of them related to the litigation. We will
`be talking about those in his testimony. But they cover any
`number of other research areas, other patent issues.
`When we are talking about test results, for
`example, it might be that Abraxis was conducting a test
`specifically related to some patent proceeding that was
`going on somewhere in the world. But I can't get into each
`of those now. It would be unfair to try to get into each of
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`That's why it's inappropriate to do exactly what
`those now.
`Elan's counsel is doing right here. That's why Weinstein's
`directive is so compelling, because it can look bad when you
`splash it up on the screen.
`So, No. 1, we are very comfortable with the
`record on Motion in Limine No. 1.
`No. 2, we shouldn't be getting into Abraxis'
`assertions of privilege.
`No. 3, the question of what to do about -- it is
`useful, I think. That is the Bench memo on what they
`propose to do, I believe.
`THE COURT:
`Your memo is?
`MR. JACOBS: Yes. There are a couple of
`Brittain issues coming up. So we have a couple of pieces of
`paper.
`
`Go ahead.
`THE COURT:
`MR. JACOBS: No. 3, if Mr. Scheve's concern is
`the specific concern that I would raise the word "privilege"
`with Dr. Brittain as opposed to a log of documents that were
`not produced to us, if that would enable us to get past this
`little imbroglio we are having here, I don't need to use the
`word "privilege" in examining Dr. Brittain.
`All the jury
`needs to understand is Dr. Brittain did some testing, he did
`it on Abraxane. The entries on the log that we got leave
`aside the word "privilege," describe that not in very much
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`detailed, nothing like this, testing, you may recall the log
`testing, testing related to the litigation.
`I do want the jury to see the lengthy list of
`documents that we didn't get, because it does have a
`substantial impact.
`But I don't need to use the word "privilege."
`THE COURT:
`Mr. Scheve, your reaction?
`MR. SCHEVE: I didn't fall off the turnip truck
`yesterday, Judge, in order to preserve my appeal. Clearly,
`they are trying to invade the privilege with regard to
`Mr. Brittain, I shouldn't be saying that, but with regard to
`Dr. Brittain, when you put it on a privilege log, I am not
`going to be coerced by opposing counsel, very good counsel,
`to now disclose that privilege, but them assume that
`everything on that list was Abraxane, that Dr. Brittain did.
`I can tell you, that is not the case.
`What they are trying to do is whipsaw me in and
`stand up and, if you will, waive the privilege that existed
`between Mr. Sipio and Dr. Brittain. And I have already told
`Your Honor that to the extent there was any testing done by
`Dr. Brittain on Abraxane, he didn't do any x-ray powder
`diffraction, and what he would like to do is point to a
`privilege log and ask this, Your Honor, to instruct the jury
`there is an inference that somehow all of this was done and
`he found some negative results and the only relevant issue
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`would be on crystallinity, when I have already represented
`to Your Honor he didn't test Abraxane using x-ray powder
`diffraction, or solid state NMR.
`So his relationship was with Mr. Sipio. If they
`want to draw that inference, and, frankly, Your Honor, I
`don't believe, I think it's error and none of us want to
`come back, I don't know how they can draw an inference from
`a privilege log. But look at these entries. Lab notebooks,
`it's information to communicate resulting results of
`experiments.
`
`If Your Honor wants briefs, I can show and this
`has been part of the problem in this lawsuit, we have heard
`about how much work there is.
`I can show you examples where
`they put something on their privilege log. It's still
`there. And then they inadvertently gave it to us. And
`there is nothing privileged in there other than it says,
`Entries of crystallinity, but it's still on the privilege
`log.
`I can go through it, if we have a further hearing, I
`can show you those sorts of materials.
`All I am urging, Your Honor, our position,
`again, that this is error and neither side ought to be
`getting into stuff that is put on a privilege log.
`Your Honor has rules that we have attempted to
`I would love to have been able to bring to Your
`abide by.
`Honor's attention these claims that a lab notebook is
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`privileged. But Your Honor had said, I am not going to hear
`anymore discovery disputes. That's why we are where we are.
`THE COURT:
`After a point, counsel, as all of
`you know, our resources are limited. We can only devote so
`much time to any one dispute.
`This case has, quite
`frankly -- I am not going to get on a soapbox this morning.
`In point of fact, this case has been one of the more
`litigious patent matters over which I have presided during
`my almost ten years on the Bench.
`And I have presided over
`a lot of patent cases.
`It has been a disappointment in that regard,
`especially because we have such good lawyers here,
`especially lead counsel, to take nothing away from associate
`counsel and second seats and all that. But it makes it
`difficult, two very able advocates, who make reasonable
`appeals to the Court's rationale or at least hopefully to
`its intellect.
`I am going to try to sort through this a
`little bit. Most especially, the word "fairness" resonates
`with me, as some of you may know or not.
`So, Mr. Jacobs, could you, just for a moment,
`address that issue that Mr. Scheve raises, the issue of,
`that this just isn't fair, Judge, because we didn't have the
`time, and even at the pretrial conference -- we could have
`said at our pretrial conference, I could have delved into
`what really happened here in these discovery disputes, what
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`patience.
`
`was -- who was really the bad actor? Was it both of you, my
`suspicion?
`Who deserves to suffer, as they say?
`So...
`MR. JACOBS: I don't want to try the Court's
`patience, regarding go --
`THE COURT:
`Don't worry about trying the Court's
`It is an important issue.
`MR. JACOBS: Let me go through how we got to
`Motion in Limine No. 1.
`Mr. Walters was here at a discovery conference.
`We had raised for Your Honor the fact that their privilege
`log seemed not to contain testing references on it. And
`that we had not gotten Elan's testing documents.
`Elan's counsel stood before Your Honor and said,
`The privilege log is complete. I am tired of being, my
`figurative words for him, I am tired of being beat up about
`my privilege log.
`THE COURT:
`representation.
`MR. JACOBS: He said the privilege log was
`complete and that we have maintained clear walls between
`consulting and testifying experts, as noted in the Court's
`order on Motion in Limine No. 1. Both of those
`representations were incorrect.
`That was the predicate for then -- and at that
`
`And I expressed concern with that
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`hearing, the Court said, No more discovery disputes, and we
`understood that.
`When Elan produced Dr. Brittain at his
`deposition, the night before we got this lengthy
`466-reference log, I took that deposition, I examined
`Dr. Brittain on what he had done for Elan in testing. The
`only question he was allowed to answer was that he had
`tested Abraxane.
`Every other question: What kind of tests did
`you do? What was the purpose of the testing? Did it relate
`to crystallinity? Did it relate to this? Did it relate to
`that?
`There was an instruction not to answer.
`We wrote to Elan several times and said, You
`can't possibly do this; he is a testifying expert. It says
`on the log he was doing testing related to this litigation.
`You proceed with Dr. Brittain at your own risk.
`I scripted
`those words, Your Honor, because I wanted to be really clear
`to Elan very early on what the consequences of the assertion
`they were making with respect to Dr. Brittain were.
`We then wrote our Motion in Limine. We said,
`Here's the history.
`Elan shouldn't be allowed to criticize
`our x-ray powder diffraction when there is all this testing
`evidence that suggested to us, based on the information we
`had then, Dr. Brittain had done precisely what we had done,
`used x-ray powder diffraction in various ways, whether on
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`Abraxane or a fraction of Abraxane or a sample, we didn't
`know. We knew only what we knew.
`We shifted the burden to
`them in that motion to demonstrate that the privilege was
`properly asserted.
`They came forward with a declaration from
`Dr. Brittain. That declaration said no more than, What I
`did in the litigation was a different subject than what I am
`testifying to as an expert. It provided no underlying
`rationale for that distinction. It provided no subject
`matter basis. We argued that precise issue at the Motion in
`Limine hearing before Your Honor.
`Your Honor observed that you had noted in the
`margin of one of the briefs the possibility of an order to
`show cause for contempt.
`Your Honor said, We are not going
`there, counsel. But I want to let Elan know that I view
`this as a very serious matter. And then we worked out, over
`the course of the Motion in Limine hearing, what's the right
`remedy here, given the violation of Federal Rule 26.
`Then we proposed an order for the Court. Elan
`took a run at the proposed order with a letter brief. We
`responded to the letter brief. Then the Court adopted the
`proposed order, which, itself, lays out the rationale for
`the adverse inference that the Court is going to instruct
`the jury on.
`
`There is none of that run up for this.
`
`They are
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`just showing up at trial and saying, Privilege log,
`privilege log.
`Look at these entries on Dr. Desai in
`particular.
`
`Your Honor knows what these cases are like.
`Here is Elan's privilege log (indicating).
`These are huge
`cases, which where we over-sweep in documents to make sure
`we don't under-produce.
`Then we go through these documents,
`both sides, this is not unique to us, one by one, and we
`say, No proper assertion of attorney-client privilege. Then
`we have some back and forth.
`Then, in this case, for example, with respect to
`communicate to patent counsel, our team went through each of
`those and confirmed that it was, in fact, communicated. It
`was, in fact, communicated.
`I don't know how else, absent appointment of
`Special Masters and all those other things that we do to
`delve more deeply into this, I don't know how else to
`suggest this could have been addressed, Your Honor, given
`where we are. It is unfair to show up at trial and throw
`this up on the screen in front of the jury.
`THE COURT:
`Last word, Mr. Scheve.
`MR. SCHEVE: I will just address two points. I
`am pleased to hear they finally addressed the word
`"fairness" at the very end other than just a rehash.
`Your Honor, the record needs to be clear. What
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`Actavis - IPR2017-01103, Ex. 1012, p. 15 of 224
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`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 16 of 224 PageID #: 9986
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`Dr. Brittain did was in his consultation with Mr. Sipio.
`His contract was to help Mr. Sipio understand some issues.
`He is continually characterizing what Mr. Brittain did,
`Dr. Brittain did, as Elan testing. And then they said,
`Well, you proceed with Dr. Brittain at your own risk.
`I have reviewed the law on, Can an inference be
`drawn from the fact that things were put on privilege? And
`the law is, There can't be any inference drawn from that,
`which is what they have invited Your Honor to do. So we
`didn't put Dr. Brittain up, because if I had, I would hear
`on appeal it's waived, that the issue is waived.
`We would simply say, Your Honor, we don't think
`it is appropriate either way for people to be instructed
`that there is an inference to be drawn when lawyers get
`information, look at it, and I don't doubt that they looked
`at stuff, although in one of the discovery conferences, Your
`Honor said, I don't know how a lab notebook can be claimed
`to be privileged. But they did it.
`We put materials on a privilege log, and Your
`Honor has never been -- again, it's because Your Honor is
`burdened -- but we reached a point where there was no
`vehicle for either party to get this in front of you for
`review. Is this really privileged? You know, entry about,
`Well, these are results of experiments, but I plan to tell
`counsel about it. Of course, you can't hide facts by
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`Actavis - IPR2017-01103, Ex. 1012, p. 16 of 224
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`saying, somehow cloaking it is something I think I am going
`to tell them in the future. Our point is if they are going
`to be able to do it with Dr. Brittain, and we think that is
`error, in fairness, how can they claim, shield from us
`experiments and claim that it wouldn't be fair for us to
`show the jury that they have done -- that they have shielded
`experiments under claims of privilege.
`THE COURT:
`Let me think about this a bit. Is
`there anything else?
`MR. JACOBS: One more fact that is useful, I
`think, Your Honor, to understanding the picture here.
`DX-186 is the actual engagement letter with
`Dr. Brittain from Mr. Sipio.
`THE COURT:
`Mr. Sipio is the fly in this
`ointment to a degree, I think, as I recall.
`MR. JACOBS: Except two things, Your Honor. No.
`1 it's cc Mr. Bokar, cc Mr. Bokar, and it states as follows,
`it's dated November 23, 2005:
`This letter will confirm that
`I have retained you as a consultant for your expertise in
`x-ray crystallography and other analytical techniques
`suitable for the characterization of chemical compounds
`present in human pharmaceutical compositions.
`THE COURT: Are there any other issues that are
`more easily disposed than this?
`MR. SCHEVE: They do plan to call Dr. Desai and
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`Actavis - IPR2017-01103, Ex. 1012, p. 17 of 224
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`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 18 of 224 PageID #: 9988
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`Dr. Soon-Shiong as a couple of their next witnesses.
`Dr. Soon-Shiong, who is the CEO, it is a series of newspaper
`articles about him that they plan to throw up about his work
`in diabetes and things of sort. It really becomes character
`evidence.
`
`He is a good man. Look what he has done to
`fight diabetes, et cetera.
`Character evidence shouldn't be coming in. If
`it does, it clearly opens the door to the fraud lawsuit
`brought by his brother against him. We go down the path,
`the fraud lawsuit brought against him by Mylan, the
`securities fraud action that is currently pending against
`him in California.
`I raise it with Your Honor so that if I
`have to ask for an opportunity for sidebar, you know where I
`am going.
`
`Secondly, it is pretty clear from what they
`intend to do that they are trying to make comparisons of the
`embodiment of the '363 patent to the accused infringing
`product. And the case law there is very clear that they
`can't do that.
`So they are not -- they have not been designated
`as experts. Clearly, they can come on as fact witnesses and
`talk about what they saw, heard, smelled, touched. But I
`believe, Your Honor, there will be many instances where what
`this devolved into with these two individuals commenting on
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`Actavis - IPR2017-01103, Ex. 1012, p. 18 of 224
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`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 19 of 224 PageID #: 9989
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`Elan's technology, it is clearly in the nature of expert
`testimony.
`I note to Your Honor we object to that. I am
`asking if you want to deal with that in realtime by sidebar.
`We think they have clearly crossed the line
`between fact witness and trying to give expert testimony on
`their perceptions of the failings of Dr. Liversidge's
`invention.
`
`Let's deal with that in realtime.
`THE COURT:
`Did you want to react to that?
`MR. JACOBS: On the first one, it actually
`wasn't about character evidence. I didn't mean to suggest
`by those documents that we were going to put his character
`in play, although we have no regrets about that in any
`respect whatsoever.
`But, rather, when Mr. Scheve took his
`deposition, his qualifications to have made the invention in
`question on our side, that is, his qualifications to have
`developed Abraxane, were called into question. What we
`intended to with demonstrate to the jury that
`Dr. Soon-Shiong is -- I hope they take away the inference
`that maybe I have taken away, that the man is a genius for
`his inventive capabilities. That is why we had it in there.
`I definitely don't intend to open the door to other
`litigation involving matters unrelated to this dispute. And
`I would ask Your Honor to patrol that during the testimony.
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`Actavis - IPR2017-01103, Ex. 1012, p. 19 of 224
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`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 20 of 224 PageID #: 9990
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`Mr. Scheve?
`THE COURT:
`MR. SCHEVE: Your Honor has already requested
`the jury repeatedly, Don't go be influenced by what the
`media says. Now I have got a stack of at least ten
`newspaper articles about him.
`I would suggest that if it's a game of what has
`the newspaper written, for every one that praised him, I can
`find one that criticized him and accused him of a lot of
`devious things. I think we have crossed the line.
`If they want to ask him, I would like to talk
`with you about what you have done, sir, great. But to put
`up the newspaper, that this newspaper or that newspaper has
`interviewed him, I don't believe that is appropriate.
`MR. JACOBS: That is fine, Your Honor. We don't
`have to use the newspaper.
`THE COURT:
`That eliminates that. There was a
`
`second.
`
`MR. JACOBS: The expert issue, it is a fine line
`but it's one that, I think, falls our way.
`We don't intend
`them to do an expert comparison in the way that the experts
`have.
`Elan has put their state of mind into play with their
`willfulness allegation, What did you think when you saw the
`Elan patents? What did you think when you saw the Elan
`presentation that you were faxed in 1996? How did you
`evaluate it compared to the technology path you were on?
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`Actavis - IPR2017-01103, Ex. 1012, p. 20 of 224
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`That is very much in play and we have to elicit that
`testimony from them.
`So that is not a real issue. We do not intend
`to ask them, In your expert opinion, Dr. Desai or
`Dr. Soon-Shiong.
`Where I would ask for a little bit of leeway is
`that the words of the witnesses, because they are typically
`in front of scientists and they are typically making
`presentations, may not always say, My understanding is that.
`But I am happy to try to set this up so that when I ask them
`a series of questions, I will start out with, Was it your
`understanding that, so that it's factual and not expert.
`MR. SCHEVE: I agree with him that how they
`perceived something in 1996 or 1995 is fact testimony. I am
`not here to argue against that. If this gets into, Let's go
`to Example 1 in the Liversidge patent, Doctor, why doesn't
`that do this, that, or the other, that crosses the line to
`expert testimony. And it is not reflecting what they saw or
`thought, heard back in '95-'96.
`THE COURT:
`I think what you just described
`Mr. Jacobs would agree. Go ahead.
`MR. JACOBS: Yes. Except I think it continues
`because the lawsuit is filed, and they have kind of put
`their state of mind in general in play.
`So what they knew exactly in their head in 1996
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`Actavis - IPR2017-01103, Ex. 1012, p. 21 of 224
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`versus what they have --
`We are talking about comparisons,
`THE COURT:
`comparisons, either directly or indirectly, that are
`inappropriate, that Mr. Scheve has identified, and you know
`as fundamental, patent cannot be done, embodiment
`comparison, that is.
`MR. JACOBS: Yes. I don't think we are actually
`going to get into this, Your Honor.
`THE COURT:
`Well, let's see how that works out.
`Let me take a look at this.
`We will take a break.
`(Recess taken.)
`THE COURT:
`Please, take your seats for a
`
`moment.
`
`As I indicated earlier, Mr. Scheve, the issue of
`fairness does resonate with me quite profoundly.
`Having
`said that, I am going to rule in Elan's favor on this, in
`the brief time we have available to us, because now I have
`had a jury waiting in a very hot and overheated room. You
`may or may not know that the rest of this building is not as
`comfortable as this courtroom and I am going to let them out
`of that box. Given the limited amount of time that I have
`had to consider and reconsider Brittain and now the issue
`raised with regard to, it's Desai, I believe, I believe
`there are some material factual differences and
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`circumstances.
`But I want to redial back to an option that I
`gave you during the pretrial conference, Mr. Scheve. That
`was to select the Motions in Limine that you felt were most
`critical.
`This, with all respect, I would have suggested
`might have been one better heard at that time when we had
`more time, when you would have had more time to write, I
`would have had more time to have the benefit of those
`writings around further argument.
`That aside, you made the election you made. You
`did review it at sidebar. That doesn't send me off on an
`aimless, mindless search willy-nilly trying to anticipate
`what your arguments may or may not be. Elan has presented
`the Court, I think, a position that is legally correct.
`You may be right, and at the end of the day, the
`Federal Circuit may say, Sleet, you blew it. It won't be
`the first time. I don't say that blithely.
`But we do what
`we do as trial judges, that is, make the best call that we
`can make under, oftentimes, rather stressful circumstances.
`This is one of them.
`I am going to make the call to agree with
`Abraxis in this situation and grant the request that is
`provided in their conclusion at Page 3 of their Bench brief.
`You have been provided a copy of that, have you not,
`Mr. Scheve?
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`MR. SCHEVE: I have, Your Honor.
`THE COURT:
`That is how this examination will
`proceed, without forcing the invocation of the privilege.
`And we
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