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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`Adam R. Brausa (Reg No. 60,287)
`Daralyn J. Durie (Pro Hac Vice)
`DURIE TANGRI LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
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`Filed on behalf of Patent Owner Genentech, Inc. by:
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`David L. Cavanaugh (Reg. No. 36,476)
`Lauren V. Blakely (Reg. No. 70,247)
`Robert J. Gunther, Jr. (Pro Hac Vice)
`Lisa J. Pirozzolo (Pro Hac Vice)
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`Kevin S. Prussia (Pro Hac Vice)
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`Andrew J. Danford (Pro Hac Vice)
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`WILMER CUTLER PICKERING
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` HALE AND DORR LLP
`1875 Pennsylvania Ave., NW
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`Washington, DC 20006
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`PFIZER, INC. AND
`SAMSUNG BIOEPIS CO., LTD.;
`Petitioners,
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`v.
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`GENENTECH, INC.,
`Patent Owner.
`____________________________________________
`Case IPR2017-014881
`U.S. Patent No. 6,407,213
`____________________________________________
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
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`1 Case IPR2017-02139 has been joined with this proceeding.
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Genentech, Inc.
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`(“Genentech”) presents the following objections to evidence served with Petitioner
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`Pfizer, Inc. and Samsung Bioepis Co., Ltd.’s (collectively, “Petitioners”) Reply
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`(Paper 56).
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`I.
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`Exhibits 1193-1196 and 1206-1211
`Genentech objects to Exhibits 1193-1196 and 1206-1211 for the following
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`reasons.
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`A. Exhibit 1193
`Genentech objects to Exhibit 1193 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1193 on the grounds
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`that it is irrelevant because it is not part of the instituted grounds, and because
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`Petitioners’ use of the exhibit is misleading, confusing, and unfairly prejudicial.
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`See Fed. R. Evid. 401, 402, 403. Genentech further objects to Exhibit 1193 as
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`inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`B.
`Exhibit 1194
`Genentech objects to Exhibit 1194 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1194 on the grounds
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`that it is irrelevant to the instituted grounds because it is not prior art, not part of
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`the instituted grounds, not probative of the state of the art at the time of the
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`invention, and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1194 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`C. Exhibit 1195
`Genentech objects to Exhibit 1195 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1195 on the grounds
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`that it is irrelevant to the instituted grounds because it is not part of the instituted
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`grounds and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1195 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`D. Exhibit 1196
`Genentech objects to Exhibit 1196 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1196 on the grounds
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`that it is irrelevant to the instituted grounds because it is not part of the instituted
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`grounds and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1196 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`E.
`Exhibit 1206
`Genentech objects to Exhibit 1206 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1206 on the grounds
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`that it is irrelevant to the instituted grounds because it is not prior art, not part of
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`the instituted grounds, not probative of the state of the art at the time of the
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`invention, and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1206 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`F.
`Exhibit 1207
`Genentech objects to Exhibit 1207 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1207 on the grounds
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`that it is irrelevant to the instituted grounds because it is not part of the instituted
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`grounds and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1207 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`G. Exhibit 1208
`Genentech objects to Exhibit 1208 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1208 on the grounds
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`that it is irrelevant to the instituted ground of obviousness because it is not part of
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`the instituted ground and because Petitioners’ use of the exhibit is misleading,
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`confusing, and unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech
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`further objects to Exhibit 1208 as inadmissible hearsay. See Fed. R. Evid. 801,
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`802.
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`H. Exhibit 1209
`Genentech objects to Exhibit 1209 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1209 on the grounds
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`that it is irrelevant to the instituted grounds because it is not part of the instituted
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`grounds and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1209 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`I.
`Exhibit 1210
`Genentech objects to Exhibit 1210 as a new exhibit that was not included in
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`the Petition or the instituted ground, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1210 on the grounds
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`that it is irrelevant to the instituted grounds because it not part of the instituted
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`grounds and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`Exhibit 1210 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`J.
`Exhibit 1211
`Genentech objects to Exhibit 1211 as a new exhibit that was not included in
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`the Petition or the instituted grounds, or any submission by Patent Owner. See 37
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`C.F.R. § 42.23(b). Genentech objects to the use of Exhibit 1211 on the grounds
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`that it is irrelevant to the instituted grounds because it is not prior art, not part of
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`the instituted grounds, not probative of the state of the art at the time of the
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`invention, and because Petitioners’ use of the exhibit is misleading, confusing, and
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`unfairly prejudicial. See Fed. R. Evid. 401, 402, 403. Genentech further objects to
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`Exhibit 1211 as inadmissible hearsay. See Fed. R. Evid. 801, 802.
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`II. Deposition Transcript of Ian Wilson, D. Phil. (Exhibit 1197)
`Genentech objects to excerpts of Deposition Transcript of Ian Wilson,
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`D. Phil. (Exhibit 1197) cited within the Reply to the extent that they are
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`mischaracterized or taken out of context, including 19:7-31:4, 19:7-23:15, 19:7-
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`21:9, 24:11-28:8, 33:18-36:7, 33:18-36:32, 49:25-56:17, 51:3-52:5, 51:3-53:13,
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`54:6-13, 55:19-56:17, 61:4-16, 75:5-77:13, 77:17-81:21, 84:11-15, 91:3-13, 92:3-
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`14, 93:4-12, 97:19-101:18, 101:19-103:5, 104:2-17, 104:12-105:5, 107:24-114:4,
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`112:12-21, 116:22-135:13, 137:21-138:20, 143:1-144:24, 146:9-176:14, 162:7-
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`168:10, 176:25-178:23, 183:14-184:4, 184:16-185:7, 187:21-193:6, 196:22-199:6,
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`5
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`212:8-217:22, 218:3-224:13, 225:17-231:8, 225:17-229:24, 231:10-232:14, 233:3-
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`234:2, 234:14-17, 239:20-25, 240:4-242:6, 242:19-244:7, 244:9-245:15, 245:22-
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`246:19, 252:12-254:21, 255:20-257:3, 258:3-263:21, 264:9-267:18, 267:24-
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`268:12, 280:24-284:15, 286:10-288:19, 289:2-292:20, and 293:8-294:10, as being
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`misleading, confusing, unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401,
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`402, 403.
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`Genentech objects to Exhibit 1197 to the extent testimony was elicited from
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`questions outside the scope of the witness’s direct testimony, as such testimony is
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`both not relevant and prejudicial to Genentech, as well as in violation of Fed. R.
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`Evid. 611(b) and 37 C.F.R. § 42.53(d)(5)(ii).
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`III. Deposition Transcript of Paul J. Carter, Ph.D. (Exhibit 1198)
`Genentech objects to excerpts from the Deposition Transcript of Paul J.
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`Carter, Ph.D. (Exhibit 1198) cited within the Reply to the extent that they are
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`mischaracterized or taken out of context, including 22:13-24:7, 24:13-26:15, 27:7-
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`28:20, 29:17-32:15, 32:25-39:15, 37:19-39:15, 50:17-51:11, 56:20-61:24, 61:25-
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`70:4, 83:7-18, 89:18-94:7, 92:18-94:7, 110:6-129:8, 112:7-112:19, 114:9-129:8,
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`141:12-145:13,169:14-173:14, 174:9-13, and 175:3-10, as being misleading,
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`confusing, unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to Exhibit 1198 the extent testimony was elicited from
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`questions outside the scope of the witness’s direct testimony, as such testimony is
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`both not relevant and prejudicial to Genentech, as well as in violation of Fed. R.
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`Evid. 611(b) and 37 C.F.R. § 42.53(d)(5)(ii).
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`IV. Deposition Transcript of Leonard George Presta, Ph.D. (Exhibit 1199)
`Genentech objects to excerpts of Deposition Transcript of Leonard George
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`Presta, Ph.D. (Exhibit 1199) cited within the Reply to the extent that they are
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`mischaracterized or taken out of context, including 22:18-23, 23:19-25:23, 26:7-
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`27:13, 27:14-28:13, 29:25-36:2, 30:5-13, 30:14-32:9, 33:7-34:9, 41:10-44:4, 57:1-
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`58:6, 63:12-64:10, 65:1-67:5, 65:13-67:5, 67:6-70:3, 69:10-70:3, 70:11-25, 71:8-
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`23, 72:9-21, 75:17-76:18, 76:19-80:13, 84:3-128:23, 84:3-85:2, 86:20-87:7, 90:1-
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`102:25, 92:9-93:9; 96:14-97:13, 98:25-99:5, 99:6-20, 101:24-102:19, 109:24-
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`112:21, 110:21-111:22, 115:1-116:17, 115:7-17, 117:10-125:15, 131:10-141:22,
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`131:10-136:14, 137:24-141:22, 156:24-159:10, 159:22 -163:1, 165:17-169:9,
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`178:24-179:6, 179:14-180:15, and 180:16-181:24, as being misleading, confusing,
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`unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to Exhibit 1199 to the extent testimony was elicited from
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`questions outside the scope of the witness’s direct testimony, as such testimony is
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`both not relevant and prejudicial to Genentech, as well as in violation of Fed. R.
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`Evid. 611(b) and 37 C.F.R. § 42.53(d)(5)(ii).
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`V. Deposition Transcript of Irene Loeffler (Exhibit 1200)
`Genentech objects to excerpts of Deposition Transcript of Irene Loeffler
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`(Exhibit 1200) cited within the Reply to the extent that they are mischaracterized
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`or taken out of context, including 15:1-12, 18:2-20:6, 21:1-22:7, 23:18-27:24,
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`28:2-38:11, 38:20-39:2, 41:18-42:4, and 46:14-50:3 as being misleading,
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`confusing, unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to Exhibit 1200 to the extent testimony was elicited from
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`questions outside the scope of the witness’s direct testimony, as such testimony is
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`both not relevant and prejudicial to Genentech, as well as in violation of Fed. R.
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`Evid. 611(b) and 37 C.F.R. § 42.53(d)(5)(ii).
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`VI. Deposition Transcript of John Ridgway Brady (Exhibit 1201)
`Genentech objects to excerpts of Deposition Transcript of John Ridgway
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`Brady (Exhibit 1201) cited within the Reply to the extent that they are
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`mischaracterized or taken out of context, including 9:1-12:12, as being misleading,
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`confusing, unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to Exhibit 1201 to the extent testimony was elicited from
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`questions outside the scope of the witness’s direct testimony, as such testimony is
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`both not relevant and prejudicial to Genentech, as well as in violation of Fed. R.
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`Evid. 611(b) and 37 C.F.R. § 42.53(d)(5)(ii).
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`VII. Reply Declaration of Jefferson Foote, Ph.D. (Exhibit 1202)
`Genentech objects to Exhibit 1202 to the extent it includes arguments that
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`IPR2017-01488
` Patent Owner’s Objections to Evidence
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`were not made in the Petition and are therefore improper to raise for the first time
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`in Petitioners’ Reply, including in, but not limited to, paragraphs 5, 7, 9, 12, 41-45,
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`61, 79, 87-88, 92, 105, 119, 160-163, and 187 of Exhibit 1202. See 37 C.F.R. §
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`42.23(b).
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`Genentech further objects to paragraphs 3-21, 27, 29-34, 36, 41-44, 47-57,
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`60-67, 68-93, 95-96, 99, and 101-191 as not based on sufficient facts or data, the
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`product of reliable principles and methods, and/or a reliable application of the
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`principles and methods to the facts, see Fed. R. Evid. 702, 703, 705, 403; 77 Fed.
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`Reg. at 48,763; 37 C.F.R. § 42.65, and as being misleading and/or confusing. See
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`Fed. R. Evid. 403.
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`Genentech objects to excerpts from the Deposition Transcript of Ian Wilson,
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`D. Phil. (Exhibit 1197) cited within the Foote Reply Declaration (Ex. 1202) to the
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`extent that they are mischaracterized or taken out of context, including 19:7-23:15,
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`19:7-21:9, 19:7-25:6, 24:11-28:8, 29:4-31:4, 33:18-36:7, 47:13-22, 51:3-53:13,
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`54:6-13, 55:19-56:17, 57:6-60:10, 61:4-16, 61:17-64:11, 67:14-68:23, 69:16-70:2,
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`75:5-77:13, 84:11-15, 91:3-13, 92:3-14, 93:4-12 97:19-101:18, 101:19-103:5,
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`103:12-25, 104:12-105:5, 111:25-112:21, 112:12-21, 137:21-138:20, 143:1-
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`144:24, 146:9-176:14, 176:25-178:23, 183:14-184:4 , 187:21-193:6, 212:8-217:22,
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`218:3-224:13, 225:17-229:24, 231:10-232:14, 233:3-234:2; 234:14-17 236:7-
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` Patent Owner’s Objections to Evidence
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`238:5, 239:11-18, 242:4-244:7, 244:9-245:15, 244:9-245:16, 245:22-246:19,
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`252:12-254:21, 255:20-257:3, 258:3-263:21, 264:9-267:18, 267:24-268:12,
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`280:24-284:15, 286:10-288:19, and 289:2-292:20, as being misleading, confusing,
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`unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to excerpts to the Deposition Transcript of Paul J. Carter,
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`Ph.D. (Exhibit 1198) cited within the Foote Reply Declaration (Ex. 1202) to the
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`extent that they are mischaracterized or taken out of context, including 22:13-24:7,
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`24:13-26:15, 27:7-28:20, 29:17-32:15, 32:25-39:15, 37:19-39:15, 43:11-18; 47:14-
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`49:11, 47:15-48:21, 56:20-61:24, 61:25-70:4, 89:18-94:7, 92:14-94:7, 110:6-129:8,
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`112:7-19, 113:20-114:20, 114:9-129:8, 125:15-129:1, 125:22-129:8, 129:3-8,
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`167:2-169:13, 169:14-173:14, 174:9-13, and 175:3-10 as being misleading,
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`confusing, unfairly prejudicial, and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to excerpts to the Deposition Transcript of Leonard
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`George Presta, Ph.D. (Exhibit 1199) cited within the Foote Reply Declaration (Ex.
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`1202) to the extent that they are mischaracterized or taken out of context, including
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`14:22-21:18, 22:18-23, 23:19-25:23, 27:14-28:13, 29:25-30:13, 30:5-32:20, 30:5-
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`13, 30:14-32:9, 33:7-34:9, 34:21-36:2, 35:22-36:1, 41:10-44:4, 49:5-50:19, 57:1-
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`58:6, 63:12-64:10; 65:1-67:5, 65:13-67:5, 67:6-70:3, 70:11-25, 71:8-23, 72:9-21,
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`75:17-76:18, 76:19-80:13, 84:3-85:2, 85:3-91:7, 86:10-88:24, 88:25-91:7, 90:1-
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`102:25, 92:9-93:9, 96:14-97:13, 98:25-99:5, 98:25-99:20, 99:6-20, 100:11-102:19,
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`101:17-21, 101:24-102:19, 101:24-102:9, 109:24-112:21, 110:21-111:22, 115:1-
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`116:17, 115:7-17, 117:10-125:15, 119:15-121:4, 123:11-25, 131:10-141:22,
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`131:10-136:14, 137:24-141:22, 156:24-159:10, 156:25-157:8, 157:9-159:10,
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`157:10-17, 157:10-158:18, 159:22-163:1, 165:17-169:9, 178:24-179:6, 179:14-
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`180:15, and 180:16-181:24 as being misleading, confusing, unfairly prejudicial,
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`and irrelevant. See Fed. R. Evid. 401, 402, 403.
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`Genentech objects to excerpts to the Deposition Transcript of John Ridgway
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`Brady (Exhibit 1201) cited within the Foote Reply Declaration (Ex. 1202) to the
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`extent that they are mischaracterized or taken out of context, including 25:15-
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`31:17, and 32:12-23, as being misleading, confusing, unfairly prejudicial, and
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`irrelevant. See Fed. R. Evid. 401, 402, 403.
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`
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`Date: June 4, 2018
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`
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`Respectfully submitted,
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`
`
`/David L. Cavanaugh/
`By:
`David L. Cavanaugh
`Reg. No. 36,476
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`202-663-6025
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`CERTIFICATE OF SERVICE
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`I hereby certify that, on June 4, 2018, I caused a true and correct copy
`of the following materials:
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` Patent Owner’s Objections to Evidence
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`to be served via electronic mail on the following attorneys of record:
`
`Amanda Hollis
`KIRKLAND & ELLIS LLP
`amanda.hollis@kirkland.com
`300 North LaSalle, Chicago, IL 60654
`
`Stefan M. Miller, Ph.D.
`stefan.miller@kirkland.com
`601 Lexington Avenue, New York, NY 10022
`
`Karen Younkins
`karen.younkins@kirkland.com
`333 South Hope Street, Los Angeles, CA 90071
`
`Benjamin A. Lasky
`benjamin.lasky@kirkland.com
`601 Lexington Avenue, New York, NY 10022
`
`Sarah K. Tsou
`sarah.tsou@kirkland.com
`601 Lexington Avenue, New York, NY 10022
`
`Mark C. McLennan
`mark.mclennan@kirkland.com
`601 Lexington Avenue, New York, NY 10022
`
`Christopher J. Citro
`christopher.citro@kirkland.com
`601 Lexington Avenue, New York, NY 10022
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`IPR2017-01488
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`Pfizer_Genentech_IPRs@kirkland.com
`
`Dimitrios T. Drivas
`White & Case LLP
`ddrivas@whitecase.com
`1221 Avenues of the Americas, New York, NY 10020
`
`Scott T. Weingaertner
`White & Case LLP
`scott.weingaertner@whitecase.com
`1221 Avenues of the Americas, New York, NY 10020
`
`Amit H. Thakore
`White & Case LLP
`athakore@whitecase.com
`1221 Avenue of the Americas, New York, NY 10020
`
`Eric Majchrzak
`White & Case LLP
`eric.majchrzak@whitecase.com
`1221 Avenue of the Americas, New York, NY 10020
`
`/Lauren V. Blakely/
`Lauren V. Blakely
`Reg. No. 70,247
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`(650) 600-5039
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