`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WATSON LABORATORIES,
`
`INC.,
`
`)
`
`Petitioner,
`
`)IPR NO. 2017-01621
`
`vs.
`
`)IPR No. 2017—01622
`
`UNITED THERAPEUTICS CORP.,
`
`Patent Owner.
`
`)
`
`)
`
`The videotaped deposition of DEFOREST
`
`MCDUFF,
`
`Ph.D., called as a witness for
`
`examination,
`
`taken pursuant to the Federal
`
`Rules of Civil Procedure of the United States
`
`District Courts pertaining to the taking of
`
`depositions,
`
`taken before ANDREA L. KIM, a
`
`Certified Shorthand Reporter of said state, CSR
`
`No. 84-3722, at Suite 4800, 35 West Wacker
`
`Drive,
`
`Chicago, Illinois, on the 6th day of
`
`April,
`
`A.D. 2018, at 9:37 a.m.
`
`
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`800-642-1099
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`A Veritext Company
`
`ww.veritext.00m
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`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, IPR2017-0162‘I
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`Page'lof297
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`
`
`PRESENT:
`
`Appeared on behalf of the Petitioner:
`
`Page 2
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`WINSTON & STRAWN,
`
`35 West Wacker Drive,
`
`Chicago, Illinois 60606
`
`BY:
`
`KURT A. MATHAS, ESQ.
`
`kmathas@winston.com
`
`Appeared on behalf of Patent Owner:
`
`WILSON SONSINI GOODRICH & ROSATI,
`
`900 South Capital of Texas Highway,
`
`Las Cimas IV, Fifth Floor,
`
`Austin, Texas 78746-5546
`
`BY:
`
`BOBBY DELAFIELD, ESQ.
`
`bdelafield@wsgr.com
`
`—and—
`
`FOLEY & LARDNER LLP,
`
`3000 K Street, N.W., Suite 600,
`
`Washington, D.C. 2000?
`
`BY:
`
`STEPHEN B. MAEBIUS, ESQ.
`
`smaebius@foley.com,
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`
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`800-642-1099
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`A Veritext Company
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`ww.veritext.00m
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`David FeIdman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, IPR2017-0162‘I
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`Page 2 of 297
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`Page 3
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`ALSO PRESENT:
`
`MR. SCOT ZIARKO, Videographer.
`
`REPORTED BY:
`
`ANDREA L. KIM,
`
`Illinois CSR No. 34—3722.
`
`
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`A Veritext Company
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`wwxeritexmom
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`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, IPR2017-0162‘I
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`Page 3 of 297
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`Page 4
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`I N D E X
`
`WITNESS:
`
`PAGE:
`
`DEFOREST MCDUFF,
`
`Ph.D.
`
`EXAM
`
`EXAM
`
`EXAM
`
`EXAM
`
`MR. DELAFIELD ..............
`
`6
`
`MR. MATHAS .................
`
`240
`
`MR. DELAFIELD ..............
`
`244
`
`MR. MATHAS .................
`
`246
`
`EXAM
`
`MR. DELAFIELD ..............
`
`246
`
`I N D E X
`
`EXHIBIT NUMBER
`
`MARKED
`
`Exhibit No.
`
`1 Article titled Thinking
`
`190
`
`Economically about Commercial Success ........
`
`Exhibit No.
`
`Exhibit No.
`
`2 Copy of U.S. Patent 9,550.716..231
`
`3 Copy of U.S. Patent 8,410,121..234
`
`Exhibit No.
`
`4 Declaration of DeForest
`
`243
`
`McDuff, Ph.D.
`
`Case IPR2017-01621 .............
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`800-642-1099
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`David F eldman Worldwide
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`A Veritext Company
`
`“wxeritextrom
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES V. UNITED THERAPEUTICS, |PR2017-0162‘I
`
`Page 4 of 297
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`
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`Page 5
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`DEFOREST MCDUFF, Ph.D.
`
`THE VIDEOGRAPHER: Good morning.
`
`We are on the record. This is the video
`
`deposition of Dr. DeForest McDuff in the matter
`
`of Watson Laboratories, Inc., versus United
`
`Therapeutics Corporation. Today's date is
`
`April 6, 2018.
`
`The time is now approximately
`
`9:35 a.m.
`
`My name is Scot Ziarko.
`
`I am with
`
`David Feldman, and I am the videographer.
`
`The
`
`court reporter is Andrea Kim.
`
`Will counsel please identify
`
`yourselves for the record, and will the court
`
`reporter please swear in the witness.
`
`MR. DELAFIELD: Bobby Delafield
`
`with Wilson Sonsini Goodrich & Rosati for
`
`patent owner and United Therapeutics.
`
`MR. MAEBIUS:
`
`Stephen Maebius from
`
`Foley & Lardner on behalf of patent owner
`
`United Therapeutics.
`
`MR. MATHAS: Good morning. Kurt
`
`Mathas, Winston & Strawn on behalf of the
`
`petitioner Watson Laboratories, Inc., and the
`
`witness, Dr. DeForest McDuff.
`
`
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`800-642-1099
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`A Veritext Company
`
`ww.veritext.00m
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`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNlTED THERAPEUTICS, |PR2017-01621
`
`Page 5 of 297
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`Page 6
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`DEFOREST MCDUFF, Ph.D.
`
`(WHEREUPON,
`
`the witness was duly
`
`sworn.)
`
`THE VIDEOGRAPHER:
`
`You may begin.
`
`DEFOREST MCDUFF, Ph.D.,
`
`called as a witness herein, having been first
`
`duly sworn, was examined and testified as
`
`follows:
`
`EXAMINAT ION
`
`BY MR. DELAFIELD:
`
`Q.
`
`A.
`
`Q.
`
`Good morning, Dr. McDuff.
`
`Good morning.
`
`Could you please state your
`
`full name for the record.
`
`A.
`
`Q.
`
`Robert DeForest McDuff.
`
`And I know you've been deposed
`
`before, but I want to go over just a few ground
`
`rules just as a reminder.
`
`The court reporter
`
`has
`
`the task of taking down all of our words,
`
`and so for every question I ask, if you could
`
`give a verbal response and not a head nod or
`
`uh—huh, and also because she has to take down
`
`every word, please wait until I finish my
`
`question, and I will wait until you finish your
`
`
`
`answer to ask the next question.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, |PR2017-01621
`
`Page 6 of 297
`
`
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`Page 7
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`DEFOREST MCDUFF, Ph.D.
`
`Do you understand?
`
`Yes.
`
`Do you understand you are
`
`A.
`
`Q.
`
`obligated to tell the truth in response to my
`
`questions?
`
`A.
`
`Q.
`
`Yes.
`
`And do you understand that you
`
`must answer all of my questions unless yOur
`
`counsel instructs you not to?
`
`A.
`
`Q.
`
`Yes, that's fine.
`
`If you need to take a break at
`
`any point time today, as long as a question is
`
`not pending, we can take a break.
`
`If for any
`
`reason -— is there any reason that would
`
`prevent you from giving your best answers in
`
`response to my questions today?
`
`A.
`
`Q.
`
`No.
`
`Are you on any medication that
`
`would affect your testimony today?
`
`A.
`
`Q.
`
`No.
`
`So approximately how many
`
`times have you worked as an expert witness in
`
`the past?
`
`
`
`I've submitted more than 50
`A.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.com
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, IPR2017-0162‘I
`
`Page 7 of 297
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`Page 8
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`DEFOREST MCDUFF, Ph.D.
`
`expert reports.
`
`I have been deposed around 40
`
`times, and then there are additional cases
`
`where I was retained but didn't submit an
`
`expert report or never got deposed.
`
`cases?
`
`cases?
`
`Q.
`
`A.
`
`Q.
`
`A.
`
`Were all of those patent
`
`No.
`
`About what percent were patent
`
`It varies over time.
`
`It's
`
`probably between 50 and 80 percent ballpark.
`
`Q.
`
`And of those cases, about what
`
`percent were pharmaceutical patent cases?
`
`more .
`
`A.
`
`Q.
`
`Ballpark around half, maybe
`
`Have you ever been a fact
`
`witness in a case?
`
`A.
`
`Q.
`
`A.
`
`I have in one instance, yes.
`
`And what was that?
`
`I provided testimony as a fact
`
`witness in a dispute related to student
`
`cheating and my role at Academic Integrity
`
`Seminar.
`
`
`
`And what role did you play in
`Q.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, IPR2017-0162‘I
`
`Page 8 of 297
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`DEFOREST MCDUFF, Ph.D.
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`that case?
`
`A.
`
`I was a tutor to a student
`
`that was identified as potentially plagiarizing
`
`his
`
`answers, and so I provided factual
`
`information about that incident.
`
`Q.
`
`So you weren't accused of
`
`cheating?
`
`A.
`
`Q.
`
`been excluded?
`
`A.
`
`Q.
`
`instances?
`
`Correct.
`
`Okay. Has your testimony ever
`
`It has in some instances, yes.
`
`Can you describe those
`
`A.
`
`There was one instance
`
`relating to a reasonable royalty in an
`
`electronics case where my testimony was not
`
`permitted, and then there have been four or
`
`five instances where my testimony was
`
`challenged on a variety of issues, and most or
`
`at least the majority of my opinions were not
`
`excluded, but there was some aspect of my
`
`opinions that was not permitted.
`
`Q.
`
`So on the reasonable royalty
`
`
`
`case you mentioned, do you recall why your
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.com
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, IPR2017-0162‘I
`
`Page 9 of 297
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`DEFOREST MCDUFF, Ph.D.
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`testimony was not permitted?
`
`A.
`
`Yes,
`
`there were two main
`
`issues there.
`
`Q.
`
`A.
`
`What were those issues?
`
`The first related to a
`
`methodology for apportionment related to
`
`vehicle tracker technology related to a type of
`
`analysis called content analysis where one
`
`quantifies apportionment based on how
`
`frequently something occurs.
`
`The Court viewed
`
`that methodology in the context of that case as
`
`not appropriate.
`
`The second issue was a
`
`methodology in calibration related to
`
`bargaining -- bargaining models and how parties
`
`would negotiate in a hypothetical negotiation.
`
`That was a methodology that was not permitted
`
`by that Court.
`
`It was later challenged in
`
`subsequent courts and permitted, and I've since
`
`published peer—reviewed articles on both
`
`topics. That's a summary of what that was
`
`about.
`
`Q.
`
`0n the apportionment issue,
`
`
`
`was that apportionment of the value of patents?
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
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`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNlTED THERAPEUTICS, |PR2017-01621
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`Page 10 of 297
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`DEFOREST MCDUFF, Ph.D.
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`A.
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`It was apportionment related
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`Page 11
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`to a reasonable royalty analysis.
`
`Q.
`
`Was the reasonable royalty
`
`analysis -— strike that.
`
`A.
`
`Q.
`
`Was it a patent case?
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`It was, yes.
`
`So in that case did you
`
`provide testimony as to different values for
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`different patents?
`
`A.
`
`I don't recall specifically
`
`how many patents there were or what
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`the
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`technology was not sitting here.
`
`Q.
`
`I am just trying to understand
`
`what you meant by apportionment if you were
`
`talking about your testimony giving value to
`
`certain patents over others.
`
`Is that what you did?
`
`A.
`
`Apportionment in a reasonable
`
`royalty context is about determining the
`
`contribution of a patent in a negotiation
`
`relative to other factors and how one goes
`
`about quantifying that.
`
`So it was a
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`quantification process for determining that
`
`
`
`contribution.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
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`David FeIdman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, |PR2017-0162‘I
`
`Page11 0f297
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`Page 12
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`DEFOREST MCDUFF, Ph.D.
`
`Q.
`
`So you determined the
`
`contribution to a reasonable royalty rate of
`
`certain patents, correct?
`
`yes.
`
`A.
`
`Q.
`
`excluded?
`
`Generally I agree with that,
`
`And that testimony was
`
`A.
`
`Q.
`
`That portion was, yes.
`
`Now you mentioned you have
`
`provided a number of opinions on pharmaceutical
`
`patent cases; is that correct?
`
`A.
`
`Q.
`
`Yes.
`
`How many of those did you find
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`that the pharmaceutical patent was not a
`
`commercial success?
`
`A.
`
`I don't have a count for you
`
`sitting here.
`
`Q.
`
`Do you know how many times you
`
`found that the pharmaceutical patent was a
`
`commercial success?
`
`A.
`
`I don't have a count for you.
`
`I‘m sorry.
`
`Q.
`
`Have you ever found that a
`
`
`
`pharmaceutical patent was a commercial success?
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, |PR2017-01621
`
`Page 12 of 297
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`Page 13
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`DEFOREST MCDUFF, Ph.D.
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`I have, yes.
`
`Is it fair to say the majority
`
`A.
`
`Q.
`
`of the time you provide an opinion that the
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`patents you are asked to opine about you find
`
`are not commercially successful?
`
`A.
`
`I don't know.
`
`It's hard to
`
`summarize in that way because it's not always
`
`an opinion that a certain patent is or isn't
`
`commercially successful. There's often a range
`
`of issues that I am evaluating in a particular
`
`case.
`
`I don't know that it's fair to describe
`
`it that way for each patent at issue.
`
`Q.
`
`Is it fair to say that you
`
`have found patents to lack commercial success
`
`more than you have found patents to have
`
`achieved commercial success?
`
`MR. MATHAS: Object
`
`to the form.
`
`BY THE WITNESS:
`
`A.
`
`I don't really think about it
`
`as patents achieving commercial success or not.
`
`That‘s not the way I would describe it.
`
`BY MR. DELAFIELD:
`
`Q.
`
`You have provided opinion in
`
`
`
`this case about the commercial success of two
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
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`David Feldman Worldwide
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`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNlTED THERAPEUTICS, |PR2017-01621
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`Page 13 of 297
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`Page 14
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`DEFOREST MCDUFF, Ph.D.
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`patents, correct?
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`MR. MATHAS: Object to the form.
`
`BY THE WITNESS:
`
`A.
`
`I would describe it as
`
`commercial success as a secondary consideration
`
`that relates to non—obviousness of two patents.
`
`BY MR. DELAFIELD:
`
`Q.
`
`So isn't that an opinion about
`
`whether or not the patents in this case were
`
`commercially successful?
`
`A.
`
`I just wouldn't describe it
`
`that way.
`
`I don't think of patents themselves
`
`being commercially successful or not.
`
`Commercial success of a product and a
`
`technology is one factor that relates to
`
`obviousness of certain patents.
`
`Q.
`
`Let me put it a different way.
`
`Would you agree with me that the majority of
`
`the pharmaceutical patent cases that you have
`
`been involved with you have found that the
`
`secondary consideration of commercial success
`
`favored that the patent was obvious?
`
`A.
`
`I don't typically view my
`
`
`
`opinion as weighing that a patent is obvious or
`
`
`800-642-1099
`
`A Veritext Company
`
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`Page 14 of 297
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`Page 15
`
`DEFOREST MCDUFF, Ph.D.
`
`not.
`
`It‘s more about does the evidence
`
`presented on commercial success as a secondary
`
`consideration support obviousness.
`
`Q.
`
`So is it fair to say that most
`
`pharmaceutical patent cases that you have been
`
`on you have found that the secondary
`
`consideration -— secondary consideration of
`
`commercial success favored obviousness?
`
`A.
`
`I don't think of it that way.
`
`It's not that the evidence favors obviousness.
`
`It's whether —-
`
`I perform an evaluation of
`
`whether the evidence should be used in favor of
`
`non-obviousness.
`
`Q.
`
`In this case would you say
`
`that the commercial success of Tyvaso would be
`
`in favor of obviousness?
`
`A.
`
`I don't think of it that way.
`
`I don't think of a lack of commercial success
`
`as a secondary consideration favoring
`
`obviousness.
`
`It is just that the secondary
`
`consideration doesn't favor non—obviousness.
`
`Q.
`
`A.
`
`Isn't that a double negative?
`
`No, not as I think of it.
`
`
`
`So is it fair to say that in
`Q.
`
`
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`Page 16
`
`DEFOREST MCDUFF, Ph.D.
`
`the most
`
`-— most of the pharmaceutical patent
`
`cases that you have been on, you have found
`
`that the secondary consideration of commercial
`
`success does not favor non—obviousness?
`
`A.
`
`Would you mind reading the
`
`question, please.
`
`(WHEREUPON,
`
`the record was read
`
`by the reporter.)
`
`BY THE WITNESS:
`
`A.
`
`What do you mean by most?
`
`BY MR. DELAFIELD:
`
`Q.
`
`A.
`
`More than 50 percent.
`
`Looking at all of the cases,
`
`that's probably true.
`
`percent?
`
`Q.
`
`A.
`
`Q.
`
`Would it be more than 75
`
`I don't know.
`
`So in all of the
`
`pharmaceutical patent cases you have been on,
`
`how often have you been retained by the brand
`
`side,
`
`the patent owner?
`
`A.
`
`I don't know.
`
`I don‘t have a
`
`specific number for you.
`
`
`
`Can you name a couple?
`Q.
`
`
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`Page 17
`
`DEFOREST MCDUFF, Ph.D.
`
`A.
`
`I mean,
`
`I can think of several
`
`examples.
`
`Q.
`
`Could you provide a couple of
`
`examples?
`
`A.
`
`So some cases that I have
`
`worked on would relate to being retained by the
`
`patent owner for the drugs Herceptin, Noxafil,
`
`Crestor.
`
`Those are some examples that come to
`
`mind.
`
`Q.
`
`For those three, did you
`
`provide an opinion about the commercial success
`
`of the patent?
`
`A.
`
`I think about it as commercial
`
`success as a secondary consideration.
`
`In two
`
`of the cases I was a consulting economist, and
`
`one of the cases I was a testifying expert.
`
`Q.
`
`Was your testimony related to
`
`commercial success?
`
`A.
`
`It was.
`
`It was put forth in
`
`support of a finding of commercial success as a
`
`secondary consideration.
`
`Q.
`
`You have been retained by
`
`Watson before, correct?
`
`
`
`Yes.
`A.
`
`
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`
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`Page170f297
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`Page 18
`
`DEFOREST MCDUFF, Ph.D.
`
`Q.
`
`How often have you been
`
`retained by Watson?
`
`A.
`
`I don't have a specific count
`
`for you, several
`
`times.
`
`1'10.
`
`Q.
`
`A.
`
`Q.
`
`Ten to 15 times?
`
`It's probably not that high,
`
`Did you meet with counsel in
`
`preparation for your deposition today?
`
`A.
`
`Q
`
`A.
`
`Q.
`
`A
`
`Q.
`
`Yes.
`
`Who did you meet with?
`
`I met with Mr. Mathas.
`
`Did you meet with anyone else?
`
`No.
`
`For how long did you meet
`
`to
`
`prepare for your deposition?
`
`A.
`
`I met with Mr. Mathas for
`
`about three to four hours.
`
`Q.
`
`Now,
`
`throughout this
`
`deposition, you understand that you are here to
`
`testify on behalf of two cases, correct?
`
`A.
`
`Q.
`
`Yes.
`
`And one is IPR 2017—01622, and
`
`
`
`the other is IPR 2017-01621, correct?
`
`
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`Page180f297
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`Page 19
`
`DEFOREST MCDUFF, Ph.D.
`
`Yes, that's right.
`
`So throughout
`
`the deposition
`
`A.
`
`Q.
`
`unless I specify a specific case or a specific
`
`patent, you understand my question to pertain
`
`to both.
`
`Is that fair?
`
`I can do that, yes.
`
`And if your answer differs
`
`A.
`
`Q.
`
`based on one patent or the other in the two
`
`cases, will you provide different answers?
`
`A.
`
`Q.
`
`I will do my best to do so.
`
`And if you don't provide a
`
`different answer, your answer will be for both
`
`cases .
`
`Is that fair?
`
`A.
`
`I don't know how it works
`
`procedurally, but I'll do my best to answer as
`
`applicable to both cases.
`
`Q.
`
`Okay. When were you first
`
`retained for these two cases?
`
`A.
`
`I believe it was in early
`
`2017.
`
`I don't have an exact date.
`
`Q.
`
`Approximately how many hours
`
`
`
`have you spent on these two cases so far?
`
`
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`Page 19 of 297
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`DEFOREST MCDUFF, Ph.D.
`
`A.
`
`I don't have an exact estimate
`
`Page 20
`
`for you.
`
`It's probably greater than 20 hours,
`
`less than 80.
`
`Somewhere in that range.
`
`total?
`
`Q.
`
`A.
`
`So between 20 and 80 hours
`
`It's very ballpark.
`
`I don‘t
`
`have specific recollection, but that seems like
`
`a likely range to me.
`
`Q.
`
`Other than counsel, have you
`
`spoken to anyone else about this deposition or
`
`either of these cases since the time you were
`
`retained?
`
`A.
`
`Yes,
`
`I spoke with a member of
`
`my staff working at my direction. His name is
`
`Mr. Noah Brennan.
`
`Q.
`
`And what did you talk about
`
`with him?
`
`A.
`
`Mr. Brennan and I discussed
`
`the upcoming deposition, and he also assisted
`
`with the preparation of my declarations as part
`
`of our work on the case.
`
`Q.
`
`Did he write part of your
`
`declarations?
`
`
`
`He may have drafted certain
`A.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.com
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`David Feldman Worldwide
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`
`Page 20 of 297
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`Page 21
`
`DEFOREST MCDUFF, Ph.D.
`
`portions. Typically -— I don't remember
`
`exactly what parts he may or may not have
`
`drafted in these cases, but a typical work
`
`process would be that someone working at my
`
`direction may draft parts of the declaration
`
`that I later review and edit.
`
`He may have done
`
`so here.
`
`I simply don't recall.
`
`Q.
`
`Did he do any of the
`
`calculations that are presented in your
`
`declarations?
`
`A.
`
`Q.
`
`He did assist with those, yes.
`
`Do you know approximately what
`
`percent of the calculations he performed?
`
`A.
`
`Mr. Brennan performed the
`
`majority of the calculations at my direction.
`
`I don't have a percentage for you, but most of
`
`the calculations he directly performed working
`
`with me.
`
`Q.
`
`What is Mr. Brennan‘s
`
`educational background?
`
`A.
`
`He has a Bachelor‘s Degree and
`
`a Master's Degree in development economics.
`
`Q.
`
`And how long has he worked
`
`
`
`with you?
`
`
`800-642-1099
`
`A Veritext Company
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`
`Page 21 of 297
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`Page 22
`
`DEFOREST MCDUFF, Ph.D.
`
`MR. MATHAS:
`
`I am going to object
`
`to the form and this whole line of questioning
`
`but go ahead.
`
`BY THE WITNESS:
`
`A.
`
`He has worked with me at
`
`Insight Economics for about a year.
`
`He and I
`
`have also worked together at a previous
`
`employer for something like three or four years
`
`in addition to the one year at Insight.
`
`BY MR. DELAFIELD:
`
`Q.
`
`Did you start work on this
`
`case at your previous employer?
`
`A.
`
`Q.
`
`No,
`
`I don't believe so.
`
`Did you talk to any other
`
`expert in this case about —- strike that.
`
`Did you talk to any other
`
`expert retained by Watson about this case?
`
`A.
`
`No. Yet, as indicated in my
`
`declaration,
`
`I did review the declaration of
`
`Dr.
`
`Donovan .
`
`Q.
`
`But you didn't have any
`
`discussions with her?
`
`A.
`
`No.
`
`
`
`Did you exchange any emails or
`Q.
`
`
`800-642-1099
`
`A Veritext Company
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`
`Page 22 of 297
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`Page 23
`
`DEFOREST MCDUFF, Ph.D.
`
`any kind of correspondence with Dr. Donovan?
`
`A.
`
`No.
`
`(WHEREUPON,
`
`the document was
`
`tendered to the witness.)
`
`BY MR. DELAFIELD:
`
`Q.
`
`You have been handed what's
`
`been premarked as Exhibit 1055 for IPR
`
`2017-01622.
`
`(WHEREUPON,
`
`the document was
`
`tendered to the witness.)
`
`BY MR. DELAFIELD:
`
`Q.
`
`And you have also been handed
`
`what‘s been marked as Exhibit 1055 for IPR
`
`2017-01621.
`
`Turning first to the 01622 or
`
`for the '507 patent, if you understand that, do
`
`you recognize this document?
`
`A.
`
`Q.
`
`declaration?
`
`Yes.
`
`Is this a copy of your
`
`A.
`
`Q.
`
`It appears to be, yes.
`
`Is this a complete and
`
`accurate copy of your declaration?
`
`
`
`Sitting here skimming through
`A.
`
`
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`DEFOREST MCDUFF, Ph.D.
`
`it,
`
`it appears to be, yes.
`
`Q.
`
`If you could turn to page 25,
`
`is that your signature on the declaration?
`
`2017?
`
`A.
`
`Q.
`
`A.
`
`Q.
`
`It is, yes.
`
`And you signed it June 21,
`
`Yes.
`
`How, you mentioned yOur
`
`assistant helped you write your declaration; is
`
`that correct?
`
`A.
`
`I don't believe that was my
`
`testimony, no.
`
`Q.
`
`No one helped you write this
`
`declaration?
`
`A.
`
`Well, as I've described,
`
`I
`
`don't have specific recollection of whether
`
`Mr.
`
`Brennan assisted with the drafting of the
`
`declaration. Often he does when I do work with
`
`him, but I just don't remember whether he did
`
`for this declaration specifically.
`
`Q.
`
`Did anyone else help you draft
`
`your declaration?
`
`A.
`
`I don't believe so, no.
`
`
`
`Counsel didn't help you draft
`Q.
`
`
`800-642-1099
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`A Veritext Company
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`Page24of297
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`DEFOREST MCDUFF, Ph.D.
`
`the declaration?
`
`A.
`
`Q.
`
`No.
`
`You cite several articles in
`
`your declaration, correct?
`
`A.
`
`Q.
`
`A.
`
`I do, yes.
`
`Who found those articles?
`
`I did along with research
`
`support from Mr. Brennan.
`
`Q.
`
`Now, if you turn to page 26 of
`
`your declaration,
`
`this is the first page of
`
`your CV; is that correct?
`
`A.
`
`Q.
`
`Yes.
`
`And is this a true and
`
`accurate copy of your CV?
`
`A.
`
`Q.
`
`It is as of June 2017.
`
`Could you briefly go through
`
`your educational background.
`
`A.
`
`Yes,
`
`I have a Bachelor's
`
`Degree —— I have two Bachelor's Degrees form
`
`the University of Maryland at College Park, one
`
`in economics, and one in mathematics.
`
`I would
`
`note that there's a typo here in the CV.
`
`It
`
`says a Bachelor's of Arts in Economics and a
`
`
`
`Bachelor of Science in Economics. That's since
`
`
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`Page 25 of 297
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`Page 26
`
`DEFOREST MCDUFF, Ph.D.
`
`been corrected.
`
`It's a Bachelor of Science in
`
`Mathematics from the University of Maryland.
`
`I also have a Master's in
`
`Economics from Princeton University and a Ph.D.
`
`in Economics from Princeton University.
`
`Q.
`
`And what year did you obtain
`
`your Ph.D.?
`
`A.
`
`Q.
`
`In 2009.
`
`I noticed in your declaration
`
`and your CV you did not put the year you
`
`graduated.
`
`put the year?
`
`A.
`
`Q.
`
`Is there any reason you didn‘t
`
`No.
`
`So as of 2009, did you
`
`consider yourself to be an expert in economics?
`
`A.
`
`Q.
`
`Yes.
`
`Did you consider yourself to
`
`be an expert in economics with respect to
`
`pharmaceutical patents?
`
`A.
`
`It would depend on what aspect
`
`of economic analysis I was evaluating.
`
`Some
`
`aspects definitely, yes. Others I would say I
`
`
`
`accumulated experience in the pharmaceutical
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.com
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, |PR2017-01621
`
`Page 26 of 297
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`Page 27
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`DEFOREST MCDUFF, Ph.D.
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`industry over time in my professional
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`experience as a consultant.
`
`I don‘t know at
`
`what point I would consider myself an expert,
`
`but certainly for any case where I put myself
`
`forth as an expert and submitted an expert
`
`report and I felt qualified at that time.
`
`Q.
`
`Do you recall how long after
`
`receiving your Ph.D.
`
`that you provided expert
`
`testimony in a pharmaceutical patent case?
`
`A.
`
`Looking at page 34 of Exhibit
`
`1055 which is the last page of my CV,
`
`I do
`
`remember my first case which didn't relate to
`
`pharmaceuticals, but I testified as an expert
`
`with respect to patents. That was in 2009.
`
`So
`
`that was immediately following my graduation
`
`and earning my Ph.D., and then specifically as
`
`to pharmaceutical cases,
`
`the first one that
`
`comes to mind is number 34 which is listed on
`
`the previous page on page 32, UCB versus Teva.
`
`That would have been in the 2013 to 2014 range.
`
`1:
`
`of course, worked on a number of
`
`pharmaceutical cases as a consultant prior to
`
`that time.
`
`
`
`So the first pharmaceutical
`Q.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.com
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNlTED THERAPEUTICS, |PR2017-01621
`
`Page 27 of 297
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`Page 28
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`DEFOREST MCDUFF, Ph.D.
`
`patent case in which you provided expert
`
`opinions was in the 2013 to 2014 range?
`
`A.
`
`As a testifying expert,
`
`that‘s
`
`right. Prior to that, of course,
`
`I provided
`
`consulting expertise.
`
`Q.
`
`So you mentioned that you
`
`considered yourself an expert with respect to
`
`economics at the time you obtained your Ph.D.;
`
`is that correct?
`
`A.
`
`Q.
`
`Yes.
`
`So would anyone with a Ph.D.
`
`in economics at the time of their graduation be
`
`an expert?
`
`A.
`
`I don't know.
`
`It depends on
`
`the context probably.
`
`It certainly is an
`
`advanced degree that has recognition of
`
`expertise?
`
`Q.
`
`What was the subject of your
`
`Ph.D. dissertation?
`
`A.
`
`The field was in applied
`
`micro—economics and financial economics, and
`
`the subject of my Ph.D. research related to
`
`financial markets in housing and real estate
`
`
`
`labor market decisions of
`and decisions of —-
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.com
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNlTED THERAPEUTICS, |PR2017-01621
`
`Page 28 of 297
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`Page 29
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`DEFOREST MCDUFF, Ph.D.
`
`students to attend colleges and universities.
`
`patents?
`
`Q.
`
`A.
`
`So it was not related to
`
`The scope was not specific to
`
`patents. Yet certainly the expertise I
`
`developed does go into my education and
`
`experience as an expert that allows me to opine
`
`in patent cases.
`
`Q.
`
`But your Ph.D. dissertation
`
`was not related to patents, correct?
`
`A.
`
`It strikes me as the same
`
`question.
`
`I will provide the same answer.
`
`Q.
`
`Well, it is just yes or no.
`
`Did your Ph.D. dissertation
`
`discuss patents?
`
`A.
`
`It did not specifically
`
`discuss patents.
`
`Q.
`
`And your Ph.D. dissertation
`
`did not discuss pharmaceuticals, correct?
`
`A.
`
`Not specifically,
`
`I don't
`
`believe so.
`
`Q.
`
`During your education, did you
`
`take any courses on pharmaceutical patents ——
`
`
`
`related to pharmaceutical patents?
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNITED THERAPEUTICS, |PR2017-0162‘I
`
`Page 29 of 297
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`Page 30
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`DEFOREST MCDUFF, Ph.D.
`
`A.
`
`Certainly my course work as a
`
`Ph.
`
`student does contribute to my expertise
`
`as an economist that I
`
`then apply to patent
`
`cases, but specifically with respect to
`
`pharmaceutical patents,
`
`the only class that
`
`comes to mind is a second year graduate course
`
`in health economics where we discussed, you
`
`know, pharmaceutical development and research,
`
`and I believe patents came up in that context.
`
`Q.
`
`Do you recall if whether a
`
`patent is valid or not came up in that context?
`
`A.
`
`Q.
`
`I don't remember.
`
`Do you recall whether
`
`analyzing commercial success of patents came up
`
`in that course?
`
`A.
`
`I don't believe it did.
`
`I
`
`don't recall.
`
`Q.
`
`You have never worked for a
`
`pharmaceutical company as a full—time job,
`
`correct?
`
`A.
`
`Not as an employee.
`
`I have as
`
`a consultant.
`
`Q.
`
`And you are not an expert in
`
`
`
`drug formulation, correct?
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATORIES v. UNlTED THERAPEUTICS, |PR2017-01621
`
`Page 30 of 297
`
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`Page 31
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`DEFOREST MCDUFF, Ph.D.
`
`A.
`
`Q.
`
`No, not as I think of it.
`
`And you are not an expert in
`
`inhalable drug delivery, correct?
`
`A.
`
`Not from a clinical
`
`perspective.
`
`I have analyzed aspects of that
`
`from an economic perspective here in this case.
`
`Q.
`
`But the technology involved
`
`with inhalable drug delivery, you are not an
`
`expert in the technology, correct?
`
`A.
`
`Not as a technical expert.
`
`I
`
`perform my work from the perspective of an
`
`economist.
`
`Q.
`
`And you are not an expert in
`
`FDA regulations, correct?
`
`A.
`
`Not in terms of specific
`
`expertise.
`
`It is something that frequently
`
`comes up in my work, and I evaluate from an
`
`economic perspective but not an area that I
`
`would claim independent expertise.
`
`Q.
`
`And you are not an expert in
`
`the treatment of pulmonary hypertension?
`
`A.
`
`Not from a clinical
`
`perspective, no.
`
`I am an economist.
`
`
`
`You are not an expert in
`Q.
`
`
`800-642-1099
`
`A Veritext Company
`
`ww.veritext.00m
`
`David Feldman Worldwide
`
`UNITED THERAPEUTICS, EX. 2035
`WATSON LABORATO