Case IPR2017-01434
`US Patent No. 5,886,035
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
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`v.
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`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
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`____________
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`Case IPR2017-01434
`U.S. Patent No. 5,886,035
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`____________
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`PATENT OWNERS' MOTION FOR OBSERVATION
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`REGARDING CROSS-EXAMINATION OF PETITIONERS' EXPERT,
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`DR. ARON D. ROSE
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`US Patent No. 5,886,035
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
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`v.
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`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
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`____________
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`Case IPR2017-01434
`U.S. Patent No. 5,886,035
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`____________
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`PATENT OWNERS' MOTION FOR OBSERVATION
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`REGARDING CROSS-EXAMINATION OF PETITIONERS' EXPERT,
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`DR. ARON D. ROSE
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`Case IPR2017-01434
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`US Patent No. 5,886,035
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`Pursuant to the Scheduling Order in this proceeding (Paper 12), and the
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`Office Patent Trial Practice Guide, Patent Owners Santen Pharmaceutical Co., Ltd.
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`and Asahi Glass Co., Ltd. (together, "Patent Owners"), respectfully submit this
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`Motion for Observation Regarding Cross-Examination of Dr. Aron D. Rose, the
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`Reply declarant of Petitioners Micro Labs Limited and Micro Labs USA Inc.
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`(together "Micro Labs" or "Petitioner"). The full transcript of Dr. Rose's July 16,
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`2018 cross-examination is being filed concurrently as Ex. 2062.
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`Observation # 1: In Ex. 2062 at 14:19-23 and 15:13-16:13, Dr. Rose
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`testified that, with respect to early PGF2α prostaglandin analogs, Ex. 2015 (a paper
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`titled "Initial Clinical Studies with Prostaglandins and their Analogues") teaches
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`that PGF2α tromethamine salts, PGF2α-IE, and 15-propionate-PGF2α-IE all "produce
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`unacceptable side effects including conjunctival hyperemia and ocular irritation."
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`Dr. Rose agreed that the authors of Ex. 2015 (Camras and Alm) "were at the
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`forefront of the development of prostaglandin analogs as of December 26, 1996."
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`Id. at 15:7-12. Dr. Rose's testimony above contradicts his assertion that early
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`PGF2α analogs were not regarded in the field as "clinically unacceptable." Ex.
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`1032, ¶¶ 25-26 ("I would not describe PGF2ɑ, or its early analogs, as 'clinically
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`unacceptable,' and nothing I have reviewed for this case suggests otherwise."); Dr.
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`Rose's testimony that he had previously reviewed Ex. 2015 (Ex. 2062 at 15:4-6)
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`Case IPR2017-01434
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`US Patent No. 5,886,035
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`also contradicts his assertion that nothing he reviewed for this case suggested
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`otherwise. Ex. 1032, ¶ 26.
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`Observation # 2: In Ex. 2062 at 18:18-23 and 19:6-23, Dr. Rose testified
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`that Ex. 2058 (a paper titled "Additive Effect of Latanoprost, a Prostaglandin F2ɑ
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`Analogue, and Timolol in Patients with Elevated Intraocular Pressure")
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`"describ[es] PGF2alpha-IE as hampered by clinically unacceptable hyperemia."
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`Dr. Rose acknowledged that the authors of Ex. 2058 cited Ex. 1033 (id. at 20:16-
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`25) and Ex. 2013 (id. at 21:7-12). And yet, Dr. Rose relied on Ex. 1033 and Ex.
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`2013 in his Supplemental Declaration for the opposite proposition - that "there
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`were several papers published showing a superior therapeutic profile for the
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`isopropyl ester modified form of PGF2α ('PGF2α-IE')." Ex. 1032, ¶ 24. Dr. Rose's
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`testimony contradicts his assertion that early PGF2α analogs were not regarded in
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`the field as "clinically unacceptable." Ex. 1032, ¶¶ 25-26. His testimony also
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`contradicts his position that Exs. 1033 and 2013 teach a "superior therapeutic
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`profile" for PGF2α-IE. Ex. 1032, ¶ 24.
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`Observation # 3: In Ex. 2062 at 22:6-10 and 22:23-23:3, Dr. Rose
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`confirmed that Petitioners' Ex. 1033 (a paper titled "Prostaglandin F2ɑ-1-Isopropyl
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`Ester Lowers Intraocular Pressure Without Decreasing Aqueous Humor Flow")
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`Case IPR2017-01434
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`US Patent No. 5,886,035
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`discloses a study in which patients "were receiving increasing doses of the
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`PGF2alpha-isopropyl ester." Dr. Rose testified that Ex. 1033 discloses that two of
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`the 20 patients in the study, i.e., "10 percent of the patients," "could not complete
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`the study for all doses because of marked conjunctival hyperemia." Id. at 24:15-
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`23. Dr. Rose's testimony illustrates the significant discontinuation rate caused by
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`conjunctival hyperemia in patients treated with PGF2ɑ–IE. Dr. Rose's testimony
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`contradicts his reliance on Ex. 1033 as teaching a "superior therapeutic profile" for
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`PGF2α-IE. Ex. 1032, ¶ 24. (Dr. Rose provided further testimony on this subject in
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`re-direct examination, but it was improperly elicited through leading questions and
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`is the subject of a motion to exclude. In any event, Dr. Rose's redirect testimony
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`focused only on technicalities regarding the disclosure in Ex. 1033; Dr. Rose did
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`not withdraw any of his cross-examination testimony detailed above.)
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`Observation # 4: In Ex. 2062 at 77:8-78:9, Dr. Rose conceded that
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`Stjernschantz (Ex. 2017) at 2:45-52 discloses "that it's clinically impossible to use
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`the PGF2alpha-IE compound in the amount that would give maximum pressure
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`reduction." See also id. at 79:3-8 (Q. "So PGF2alpha-IE in its current form,
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`unmodified, presented challenges for continued use; correct?" A. "That's what
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`Stjernschantz is writing here."). Dr. Rose's testimony further contradicts his
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`US Patent No. 5,886,035
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`assertion that early PGF2α analogs were not regarded in the field as "clinically
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`unacceptable." Ex. 1032, ¶¶ 25-26.
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`Observation # 5: In Ex. 2062 at 101:8-12, Dr. Rose agreed that Figure 3 of
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`Ex. 2003 reports "differences in IOP between treated and control eyes . . . over
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`time for four different doses of drug." Dr. Rose agreed that the highest dose Figure
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`3 discloses is 200 µg (id. at 101:13-15), and, at 200 µg, PGF2α exhibits a 7 to 8
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`mmHg increase in IOP shortly after administration (id. at 102:4-11). Dr. Rose
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`agreed that this 200 µg dose of PGF2α "provide[s] IOP-lowering activity for at least
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`about 24 hours." Id. at 102:12-15. Dr. Rose also agreed that the next highest dose
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`of PGF2α in Figure 3—50 µg—shows an initial increase in IOP of 10 mmHg
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`shortly after administration. Id. at 102:16-25. Dr. Rose further agreed that the
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`next highest dose of PGF2α in Figure 3—5 µg—"is the highest dose studied that
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`[does] not exhibit a clear initial increase in IOP." Id. at 103:2-13. Dr. Rose
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`conceded that "although lowering the dose from 200 to 5 micrograms eliminated
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`that initial increase in IOP, the duration of IOP lowering was decreased to less than
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`24 hours [specifically, to approximately 15 hours or less] with 5 micrograms of
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`PGF2alpha." Id. at 103:14-24. Dr. Rose's testimony contradicts Petitioners' and
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`Dr. deLong's argument that an undesirable initial increase in IOP could be
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`addressed by simply decreasing the dose. Reply (Paper 24) at 12-13; Ex. 1031,
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`¶ 30. Rather, Dr. Rose's testimony demonstrates that decreasing the dose of a
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`prostaglandin also results in decreasing the overall efficacy of the drug. Ex. 2028,
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`¶ 7.
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`Observation # 6: In Ex. 2062 at 39:16-22 and 41:16-23, Dr. Rose testified
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`that, one method to measure IOP efficacy is to measure the "area under the curve"
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`in a graph plotting IOP reduction (y-axis) against elapsed time after an
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`administered dose (x-axis). In that case, "the area under the curve signifies the
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`percent IOP reduction summed across the elapsed time [after a given dose]." Id.
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`Dr. Rose agreed that "when examining the area under the curve for an IOP
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`reduction, the higher the value, the more effective the drug is at reducing IOP." Id.
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`at 45:16-46:4. For example, "as the dose increases, the area under the curve
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`increases." Id. at 45:12-14. As with increasing dose, Dr. Rose also agreed that
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`"the magnitude of the peak IOP reduction . . . will affect the magnitude of the area
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`under the curve," i.e., "all other things being equal, if you have a higher peak
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`reduction of IOP, you will have a greater area under the curve for IOP reduction."
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`Id. at 46:9-18. With respect to Table 4 of Klimko (Ex. 1003), Dr. Rose agreed that
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`Compound D (17-phenyl-18,19,20-trinor PGF2α-IE) has a "mean percent IOP
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`reduction at 4 hours after the fifth dose [of] 39.8 percent," but Compound C (16-
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`phenoxy-17,18,19,20-tetranor PGF2α-IE) only has a "highest reported mean percent
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`US Patent No. 5,886,035
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`IOP reduction . . . of . . . 30.2 percent." Id. at 47:9-48:2. Dr. Rose's testimony
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`regarding the significance of the magnitude of the peak IOP reduction contradicts
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`his and Petitioner's contention that a POSITA would have chosen Compound C of
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`Klimko (Ex. 1003) as a lead compound, rather than, e.g., Compound D of Klimko,
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`which had a much higher reported peak IOP reduction (and lower hyperemia) than
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`Compound C. Ex.1032, ¶ 47; Reply (Paper 24) at 2.
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`Observation # 7: In Ex. 2062 at 29:18-30:6, Dr. Rose testified that, with
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`respect to the duration of IOP lowering for the compounds disclosed in Table 4 of
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`the asserted Klimko prior art (Ex. 1003 at 18), "[t]here were no other percent IOP
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`reduction data presented for any other time points other than 16 hours after the
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`fourth dose, 2 hours after the fifth dose, 4 hours after the fifth dose, and 6 hours
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`after the fifth dose." Dr. Rose further testified that he "cannot predict the exact
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`IOP at 24 hours after the fifth dose." Id. at 32:16-22. In contrast, Dr. Rose agreed
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`that in Ex. 2059 (a paper titled "PhXA34–A Prostaglandin F2ɑ Analogue. Effect on
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`Intraocular Pressure in Patients with Ocular Hypertension"), the authors measured
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`IOP reduction at several timepoints after the administered dose, including "at 24
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`hours after the dose." Id. at 33:20-24, 37:5-38:13. The authors of Ex. 2059 are
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`Alm and Villumsen, and like Dr. Alm, "Dr. Villumsen was another investigator at
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`the forefront of prostaglandin analog development prior to December 26, 1996."
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`Id. at 34:7-13. Dr. Rose's testimony contradicts his and Petitioners' position that a
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`POSITA would settle for extrapolating—rather than requiring direct measurement
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`of—the level of IOP reduction at 24 hours after the administration of Compounds
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`A-D of Klimko (Ex. 1003). Ex. 1032, ¶ 52; Reply (Paper 24) at 3-4. Dr. Rose's
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`testimony also contradicts his and Petitioners' position that a POSITA would
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`reasonably expect, based on the data of Klimko (Ex. 1003) that Compound C
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`exhibited a longer-lasting IOP reduction than Compounds A, B and D, in the
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`context of once-daily dosing. Ex. 1032, ¶ 48; Reply (Paper 24) at 2-4.
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`Observation # 8: In Ex. 2062 at 48:3-25, Dr. Rose conceded that the
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`authors of Ex. 2059 (Alm and Villumsen) distinguish their test compound from the
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`hyperemia caused by PGF2ɑ–IE. Dr. Rose also conceded that the authors of Ex.
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`2059 specifically note that their compound does not cause an undesirable initial
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`increase in IOP, even at a dose of 10µg, unlike high doses of PGF2ɑ–IE, which do
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`cause an initial increase in IOP. Id. at 49:4-50:7. Dr. Rose's testimony highlights
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`that investigators in the field of prostaglandin analogs—including Alm and
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`Villumsen, who were at the forefront of prostaglandin analog development as of
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`December 26, 1996 (id. at 15:7-12, 34:7-13)—specifically emphasized hyperemia
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`and an initial increase in IOP as drug properties to avoid. Dr. Rose's testimony
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`contradicts his and Petitioners' attempt to minimize the importance of avoiding
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`hyperemia and an initial increase in IOP when developing a prostaglandin analog.
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`Ex. 1032, ¶¶ 26, 41, 44, 47; Reply (Paper 24) at 4, 12-13.
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`Observation # 9: In Ex. 2062 at 57:10-17, when asked whether he is
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`"uncomfortable designating the classification of moderate to any of the scores in
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`this scoring system of Klimko, Exhibit 1003," Dr. Rose testified that he is "much
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`more comfortable using the author's own detailed description of his findings than
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`assigning other words." Dr. Rose further testified: "I have trouble with the
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`substitution of the words 'mild,' 'moderate,' or 'severe' for a study which takes
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`pain to describe exactly what those numeric values indicate. It's a word
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`substitution game that I don't feel does anything other than obscure the intent of the
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`author to outline specifically what his findings were." Id. at 53:23-54:10
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`(emphasis added). Dr. Rose's testimony contradicts his and Petitioners'
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`characterization of the hyperemia caused by Compound C of Klimko (Ex. 1003) as
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`"only moderate," "mild/moderate," or "mild/modest," as opposed to "severe."
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`Ex. 1032, ¶ 46 (emphasis added); Reply (Paper 24) at 5, 8 (emphasis added).
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`Observation # 10: In Ex. 2062 at 67:15-25, Dr. Rose agreed that in
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`Stjernschantz (Ex. 2017), Compound 4 (Compound C of Klimko (Ex. 1003)) is
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`only tested in cats, not monkeys: "Q. There's no indication anywhere in
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`Stjernschantz that Compound C was tested in monkeys; correct? A. I believe that's
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`correct." Dr. Rose also asserted that IOP lowering data is not comparable between
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`cats and monkeys: Q. "And the dose required for IOP lowering isn't necessarily
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`the same in cats and monkeys; correct?" A. "There's little equivalence between
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`animals in pressure studies." Id. at 68:20-25. Dr. Rose's testimony contradicts his
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`and Petitioners' argument that a POSITA would compare the doses of Compound
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`C used in the cat IOP lowering experiment in Stjernschantz (Ex. 2017) and in the
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`monkey IOP lowering experiment in Klimko (Ex. 1003) to determine whether the
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`dose in either species could be lowered. Ex. 1032, ¶ 32; Reply (Paper 24) at 13.
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`Observation # 11: In Ex. 2062 at 75:7-11, Dr. Rose stated that, in his
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`opinion, "the peak IOP lowering for Compound 2 in table 6 of Exhibit 2017 [is] at
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`8 hours or more after administration." See also id. at 73:2-4. In contrast, Dr. Rose
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`agreed the peak IOP lowering for latanoprost, the first licensed prostaglandin
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`analog (Compound 9 in Table 6 of Ex. 2017), is 6 hours after administration – "an
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`earlier peak effect than Compound 2." Id. at 75:25-12. Dr. Rose confirmed that
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`"[l]atanoprost was chosen for development by Stjernschantz [Ex. 2017]." Id. at
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`76:20-23. Dr. Rose's testimony contradicts Petitioners' and Dr. deLong's argument
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`that a POSITA would have sought a lead compound with a late peak IOP lowering
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`effect. Reply (Paper 24) at 2-3; Ex. 1031, ¶¶ 14-16.
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`US Patent No. 5,886,035
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`Observation # 12: In Ex. 2062 at 82:12-7, Dr. Rose confirmed that
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`Stjernschantz (Ex. 2017) "specifically say[s at 4:32-35] that not every derivative
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`that he discloses is therapeutically effective and physiologically acceptable." Dr.
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`Rose further agreed that in Table 4 of Stjernschantz, PGF2ɑ–IE serves as the
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`positive control and has a 2.8 ± 0.2 degree of hyperemia. Id. at 83:22-84:4. Dr.
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`Rose confirmed that although Compound 9 (latanoprost) has 1.3 ± 0.3 degree of
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`hyperemia, Compound 4 (Klimko's Compound C) has a 2.3 ± 0.3 degree of
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`hyperemia. Id. at 84:5-17. Dr. Rose's testimony confirms that the degree of
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`hyperemia for Compound C (2.3 ± 0.3) was near that of the PGF2ɑ–IE positive
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`control (2.8 ± 0.2), especially compared to latanoprost (1.3 ± 0.3) - the only FDA-
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`approved prostaglandin analog for IOP reduction as of December 26, 1996. Dr.
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`Rose's testimony refutes his and Petitioners' assertion that Stjernschantz discloses a
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`favorable therapeutic profile for Compound 4 (Compound C of Klimko (Ex.
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`1003)). Ex. 1032, ¶¶ 34-35; Reply (Paper 24) at 6-7.
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`Observation # 13: In Ex. 2062 at 85:2-86:25 and 87:20-88:6, Dr. Rose
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`conceded that Stjernschantz (Ex. 2017) at 10:48-52 discloses "three 17-phenyl
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`compounds as advantageous in reducing conjunctival hyperemia compared to
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`naturally occurring prostaglandins," but none of those compounds are Compound 4
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`(Compound C of Klimko (Ex. 1003)). Dr. Rose's testimony contradicts his and
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`Petitioner's argument that Stjernschantz favorably characterizes Compound C. Ex.
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`1032, ¶¶ 34-35; Reply at 6-7.
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`Observation # 14: In Ex. 2062 at 89:7-21, Dr. Rose agreed that
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`Stjernschantz (Ex. 2017) at 10:57-11:1 discloses that certain compounds
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`"exhibiting no ocular irritation and only modest conjunctival/episcleral hyperemia
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`significantly lowered IOP in primates." Dr. Rose further agreed that those
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`disclosed compounds do "not include the 16-phenoxy compound, Compound 4,
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`which is Compound C of Klimko," (id. at 89:22-90:2) and that nothing in that
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`paragraph of Stjernschantz discloses 16-phenoxy compounds (such as Compound
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`C of Klimko) (id. at 90:9-11). Dr. Rose's testimony contradicts his and Petitioner's
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`argument that Stjernschantz favorably characterizes Compound C. Ex. 1032, ¶¶
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`34-35; Reply at 6-7.
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`Observation # 15: In Ex. 2062 at 97:16-19 and 98:3-11, Dr. Rose
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`confirmed that Figure 3 of Ex. 2034 (a paper titled "Effect of 8-iso Prostaglandin
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`E2 on Aqueous Humor Dynamics in Monkeys") provides data comparing eyes
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`treated with a prostaglandin analog and control eyes. Dr. Rose agreed that "[i]n
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`figure 3 of Exhibit 2034, the first nonzero time point after administration is
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`approximately a half an hour." Id. at 98:16-19. He also agreed that "at a half an
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`hour, the mean IOP for the treated eye [is] the same or lower than the control eye
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`at every dose." Id. at 98:20-5. Dr. Rose's testimony demonstrates that the
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`disclosed prostaglandin analog of Ex. 2034 does not exhibit an initial increase in
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`IOP after administration, because the mean IOP for the treated eye is the same or
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`lower than the control eye at every dose. This contrasts with the initial increase in
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`IOP observed in Table 5 of Stjernschantz (Ex. 2017) for Compound 4 (Compound
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`C of Klimko (Ex. 1003)); Dr. Rose agreed that: "For Compound 4, which is
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`Compound C of Klimko, at the first nonzero time point after administration, which
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`in this case is 1 to 2 hours after administration, the IOP of the treated eye, the mean
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`IOP of the treated eye is higher than the mean IOP of the control eye." Id. at
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`92:14-25 (emphasis added). Dr. Rose's testimony contradicts Petitioners' and Dr.
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`deLong's argument that the fact there was no initial increase in the prostaglandin
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`analog of Ex. 2034 means there was also no initial increase in IOP for Compound
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`4 (Compound C of Klimko) in Table 5 of Stjernschantz; his testimony instead
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`establishes that those two compounds have different properties. Reply (Paper 24)
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`at 10-11; Ex. 1031, ¶ 41.
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`Dated: July 26, 2018
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`Case IPR2017-01434
`US Patent No. 5,886,035
`Respectfully submitted,
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`/ Arlene Chow /
`Arlene L. Chow
`Registration No. 47,489
`Eric J. Lobenfeld
`(pro hac vice)
`Ernest Yakob
`Registration No. 45,893
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
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`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
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`US Patent No. 5,886,035
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT
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`OWNERS' MOTION FOR OBSERVATION REGARDING CROSS-
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`EXAMINATION OF PETITIONERS' EXPERT, DR. ARON D. ROSE was served
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`on July 26, 2018, by filing this document through the Patent Trial and Appeal
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`Board End to End System as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Cedric C.Y. Tan, Reg. No. 56,082
`H. Keeto Sabharwal, pro hac vice
`Yun Wei, Reg. No. 70,744
`Alton L. Hare, Reg. No. 68,638
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`Email: cedric.tan@pillsburylaw.com
`Email: keeto.sabharwal@pillsburylaw.com
`Email: sophie.wei@pillsburylaw.com
`Email: alton.hare@pillsburylaw.com
`
`Sean M. Weinman, Reg. No. 69,515
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Tel.: (703) 770-7511
`Fax.: (703) 770-4856
`Email: sean.weinman@pillsburylaw.com
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`MicroLabsIPR@pillsburylaw.com
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`Dated: July 26, 2018
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`Case IPR2017-01434
`US Patent No. 5,886,035
`/ Arlene Chow /
`
`Arlene L. Chow
`Registration No. 47,489
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
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`15
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