Case 1:0 -cv-00438-GMS Document 624 Filed 06/2 4/08 Page 1 of 224 PagelD #: 9971
`1184
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`IN THE UNITED STATES DISTRICT COURT
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`IN AND FOR THE DISTRICT OF DELAWARE
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`ELAN PHARMA INTERNATIONAL
`LIMITED ,
`
`Civil Action
`
`Plaintiff ,
`
`v.
`
`ABRAXIS BIOSCIENCE INC.,
`
`Defendant.
`
`No. 06-438 - GMS
`
`Wilmington, Delaware
`Monday, June 9, 2008
`8:30 a . m.
`SIXTH DAY OF TRIAL
`
`BEFORE: HONORABLE GREGORY M. SLEET , Chief Judge ,
`and a Jury
`
`APPEARANCES:
`
`J OHN G. DAY , ESQ.
`Ashby & Geddes
`- and-
`STEPHEN SCHEVE , ESQ . ,
`LINDA M. GLOVER, ESQ. ,
`JEFFREY SULLIVAN, ESQ . I
`LISA A. CHIARINI, ESQ .
`ROBERT RIDDLE , ESQ ., and
`PAUL FEHLNER, ESQ.
`Baker Botts LLP
`(Houston , TX)
`- and(cid:173)
`GREGORY BOICAR , ESQ .
`Counsel - Elan Drug De livery
`
`Counsel for Plaintiff
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.O I of 224
`
`
`1184
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`IN THE UNITED STATES DISTRICT COURT
`
`IN AND FOR THE DISTRICT OF DELAWARE
`
`ELAN PHARMA INTERNATIONAL
`LIMITED ,
`
`Civil Action
`
`Plaintiff ,
`
`v.
`
`ABRAXIS BIOSCIENCE INC.,
`
`Defendant.
`
`No. 06-438 - GMS
`
`Wilmington, Delaware
`Monday, June 9, 2008
`8:30 a . m.
`SIXTH DAY OF TRIAL
`
`BEFORE: HONORABLE GREGORY M. SLEET , Chief Judge ,
`and a Jury
`
`APPEARANCES:
`
`J OHN G. DAY , ESQ.
`Ashby & Geddes
`- and-
`STEPHEN SCHEVE , ESQ . ,
`LINDA M. GLOVER, ESQ. ,
`JEFFREY SULLIVAN, ESQ . I
`LISA A. CHIARINI, ESQ .
`ROBERT RIDDLE , ESQ ., and
`PAUL FEHLNER, ESQ.
`Baker Botts LLP
`(Houston , TX)
`- and(cid:173)
`GREGORY BOICAR , ESQ .
`Counsel - Elan Drug De livery
`
`Counsel for Plaintiff
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.O I of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 2 of 224 PagelD #: 9972
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`APPEARANCES CONTINUED:
`
`ELENA C. NORMAN, ESQ. I and
`MICHELLE SHERETTA BUDlCAK, ESQ.
`Young Conaway stargatt & Taylor, LLP
`-and-
`MICHAEL A. JACOBS, ESQ.,
`EMILY A. EVANS, ESQ.,
`ERIC S. WALTERS, ESQ.,
`DIANA KRUZE, ESQ., and
`ERIK J. OLSON, ESQ.
`Morrison & Foerster
`(San Francisco, CA)
`
`Counsel for Defendant
`
`THE COURT: Good morning, counsel. Please be
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`seated for a moment.
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`(Counsel respond "Good morning. ")
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`THE COURT: Mr. Jacobs.
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`MR. JACOBS: Thank you, Your Honor. Mr. Scheve
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`has signaled an intent to examine Dr. Desai, our first
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`witness this morning, about privilege log entries in
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`Dr. Desai's notebook.
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`We have seen a graphic displayed on the screen
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`in which Mr. Scheve would display those privilege log
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`entries or notebook pages with privilege redactions on them.
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`Mr. Scheve's contention is because the Court has
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`decreed that an adverse inference will be drawn from
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`Dr. Brittain's related privilege assertions, Elan should be
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`able to develop a record that Ahraxis asserted the privilege
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`over, in this case, Dr. Desai's notebook entries.
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.02 of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 3 of 224 PagelD #: 9973
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`The two are not parallel. The Court made
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`findings with respect to Dr. Brittain in order to even get
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`into examining a witness on the stand about topics that bear
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`on attorney-client privilege. Our position is the Court
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`would have to make similar findings.
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`We think Mr. Scheve, Elan, should be directed
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`not to raise any such issues or any such implication to
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`examine Dr. Desai on any topics that bear on attorney-client
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`privilege issues during the cross-examination of Dr. Desai.
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`THE COURT: Okay. Mr. Scheve.
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`MR. SCHEVE: Thank you, Your Honor.
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`If I could, beforehand, Mr. Day couldn't be here
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`today. He says there is a small event going on this
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`evening.
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`THE COURT: He took the day off. Huh?
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`MR. SCHEVE: Or at least half the day. He is
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`dealing with some issues Your Honor may be familiar with.
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`THE COURT:
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`Indeed. OUr children's graduation
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`from high school.
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`MR. SCHEVE: Yes.
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`Your Honor, if I may put up a slide, what this
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`is about, and there has been a Bench brief filed by Abraxis
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`that cites the case authority.
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`MR. JACOBS: May we provide that to Your Honor?
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`THE COURT: Yes.
`
`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.03 of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 4 of 224 PagelD #: 9974
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`MR. SCHEVE: And that case authority on Page 2,
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`Your Honor, if I may quote from, in the first instance, from
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`3 Weinstein's federal evidence, saying, The claim of a
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`privilege is not a proper subject of comment by judge or
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`counsel. No inferences may be drawn therefrom.
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`Then, later on in the Ninth Circuit, they cite
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`another case, that there could be no negative inference from
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`a defendant witness' claims of attorney-client privilege.
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`I raise that because what we did with
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`Dr. Brittain is create a privilege log. You will recall, he
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`signed an agreement with an attorney named Sipio and was
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`providing consultation with Mr. Sipio. Everyone of those
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`was placed on a privilege log.
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`I think the record, and Your Honor will recall,
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`the position we urged upon the Court is it would be
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`inappropriate for an inference to be drawn from the fact
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`that we claimed those are privileged.
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`Your Honor has, to this date, said that you will
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`allow that inference to be drawn. This is what has occurred
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`during discovery, which is the image up here.
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`What Abraxis has done, Your Honor, has claimed
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`privilege over, quote, results from experiments that they,
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`"to" communicate to the counsel. Not reflecting anything
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`that was communicated to counsel, or Desai lab notebook
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`reflecting information to communicate to patent counsel
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.04 of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 5 of 224 PagelD #: 9975
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`regarding product composition.
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`They have, I don't remember what the number is
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`there, it is page after page after page of testimony results
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`from the lab notebook that I can't see because they are
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`claiming it's privileged.
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`I don't understand how they are now going to
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`call Dr. Desai, who is going to testify, and be able to
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`claim that a lab notebook is privileged when it clearly
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`doesn't say, Reflects communication with attorney. This is
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`lab results.
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`My view, Your Honor, is while we think the
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`proper ruling, and I say this, Your Honor, because none of
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`us want to come back and try this case again, we think it is
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`legal error for an inference to be drawn when counsel, when
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`Mr. Brittaints gave us those documents, that he consulted
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`with Mr. Sipio on, we put them on a privilege log. There
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`was never a motion brought to compel. Never a request that
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`Your Honor look at it to determine whether, in fact, it was
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`privileged.
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`And now they have asked you, they want a
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`negative inference to be drawn from the fact we put it up
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`there.
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`If you look at the cases cited in their brief, itts
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`error.
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`But they want to be able to pull Dr. Brittain in
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`here tomorrow and go through that.
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`I am saying, If that's
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.05 of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 6 of 224 PagelD #: 9976
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`Your Honor's ruling, why can they make reference to a
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`privilege log that's never been reviewed, for which there
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`has never been a ruling, and our contention is, as we have
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`argued in the past, and I don't mean to rehash, but our view
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`is that you can't draw
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`there can't be -- what's the right
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`word -- a repercussion until there is first a predicate act.
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`THE COURT: Which motion in limine was this?
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`Does anybody remember?
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`MR. SCHEVE: They attempted to limit us to
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`Mr. Brittain.
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`MS. GLOVER: No.1.
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`MR. JACOBS: No.1.
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`THE COURT: By Abraxis?
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`MR. JACOBS: Correct.
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`MR. SCHEVE:
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`If they are going to be able to
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`call Dr. Brittain tomorrow and Mr. Jacobs has advised me he
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`has got him under subpoena, he would be here today but he is
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`taking care of his grandchild, that they are putting him on
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`solely to put up that privilege log and argue that there
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`must be something there that is being withheld from somebody
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`and get a negative inference.
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`Our view is, while we don't think it is
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`appropriate either way, why should they be allowed to do it
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`and then I can't do the same thing? That's just not fair.
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`THE COURT: Okay.
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.06 of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 7 of 224 PagelD #: 9977
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`Mr. Jacobs.
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`MR. JACOBS:
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`So there are a couple of issues now
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`getting rolled up into one. No.1, we are very comfortable
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`with the record on Motion in Limine No.1. We are very,
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`very comfortable with the record, including the observation
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`by the Court about the seriousness of the violation that led
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`to the ruling on Motion in Limine No.1.
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`No.2, we can't, in the ten minutes before
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`witness' testimony is supposed to start, we can't go through
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`each of the privilege log entries and have a reargument
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`about these privilege log entries.
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`I can tell you several
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`things, if it will comfort the Court. We went through each
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`of these entries on a one-by-one basis with Dr. Desai to
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`make sure that the privilege was properly being asserted.
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`We did it because there was back and forth between counsel
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`about the privilege log entries.
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`Dr. Desai's notebooks relate to a wide variety
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`of topics, some of them related to the litigation. We will
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`be talking about those in his testimony. But they cover any
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`number of other research areas, other patent issues.
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`When we are talking about test results, for
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`example, it might be that Abraxis was conducting a test
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`specifically related to some patent proceeding that was
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`going on somewhere in the world. But I can't get into each
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`of those now. It would be unfair to try to get into each of
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.07 of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 8 of 224 PagelD #: 9978
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`those now. That's why it's inappropriate to do exactly what
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`Elan's counsel is doing right here. That's why Weinstein's
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`directive is so compelling, because it can look bad when you
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`splash it up on the screen.
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`So, No.1, we are very comfortable with the
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`record on Motion in Limine No.1.
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`No.2, we shouldn't be getting into Abraxis'
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`assertions of privilege.
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`No.3, the question of what to do about -- it is
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`useful, I think. That is the Bench memo on what they
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`propose to do, I believe.
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`THE COURT: Your memo is?
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`MR. JACOBS: Yes. There are a couple of
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`Brittain issues coming up. So we have a couple of pieces of
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`paper.
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`THE COURT: Go ahead.
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`MR. JACOBS: No.3, if Mr. Scheve's concern is
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`the specific concern that I would raise the word "privilege"
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`with Dr. Brittain as opposed to a log of documents that were
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`not produced to us, if that would enable us to get past this
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`little imbroglio we are having here, I don't need to use the
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`word "privilege" l..n examining Dr. Brittain. All the jury
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`needs to understand is Dr. Brittain did some testing, he did
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`it on Abraxane. The entries on the log that we got leave
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`aside the word "privilege," describe that not in very much
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`Apotex v. Abraxis - IPR20 IS-OO 153, Ex. 1012, p.OS of 224
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`Case 1:0 -cv-00438-GMS Document 624 Filed 06/24/08 Page 9 of 224 PagelD #: 9979
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`detailed, nothing like this, testing, you may recall the log
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`testing, testing related to the litigation.
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`I do want the jury to see the lengthy list of
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`documents that we didn't get, because it does have a
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`substantial impact.
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`But I don't need to use the word "privilege."
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`THE COURT: Mr. Scheve, your reaction?
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`MR. SCHEVE:
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`I didn't falloff the turnip truck
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`yesterday, Judge, in order to preserve my appeal. Clearly,
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`they are trying to invade the privilege with regard to
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`Mr. Brittain, I shouldn't be saying that, but with regard to
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`Dr. Brittain, when you put it on a privilege log, I am not
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`going to be coerced by opposing counsel, very good counsel,
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`to now disclose that privilege, but them assume that
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`everything on that list was Abraxane, that Dr. Brittain did.
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`I can tell you, that is not the case.
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`What they are trying to do is whipsaw me in and
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`stand up and, if you will, waive the privilege that existed
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`between Mr. Sipio and Dr. Brittain. And I have already told
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`Your Honor that to the extent there was any testing done by
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`Dr. Brittain on Abraxane, he didn't do any x-ray powder
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`diffraction, and what he would like to do is point to a
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`privilege log and ask this, Your Honor, to instruct the jury
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`there is an inference that somehow all of this was done and
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`he found some negative results and the only relevant issue
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.09 of 224
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`would be on crystallinity , whe n I have already represented
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`to Your Honor he didn't test Abraxane using x-ray powder
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`diffraction , or solid state NMR.
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`So his relationship was with Mr. Sipio .
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`If they
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`want to draw that inference, and, frankly , Your Honor, I
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`don't believe, I think it's error and none of us want to
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`come back , I don't know how they can draw an inference from
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`a privilege log . But look at these entries . Lab notebooks,
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`it's information to communicate resulting results of
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`experiments .
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`If Your Honor wants briefs ,
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`I can show and this
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`has been part of the problem in this lawsuit , we have heard
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`about how muc h work there is .
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`I can show you examples where
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`they put something on their privilege log .
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`It's still
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`there . And then they inadvertently gave it to us. And
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`there is nothing privileged in there other than it says,
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`Entries of c rystallinity , but it' s still on the privilege
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`log .
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`I can go through it , if we have a further hearing, I
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`can show you those sorts of materials.
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`All I am urging , Your Honor , our position,
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`again , that this is error and neither s ide ought to be
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`getting into stuff that is put on a privilege log.
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`Your Honor has rules that we have attempted to
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`abide by.
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`I would love to have been able to bring to Your
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`Honor ' s attention these claims that a lab notebook is
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.1 0 of 224
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`privileged. But Your Honor had said, I am not going to hear
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`anymore discovery disputes. That's why we are where we are.
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`THE COURT: After a point, counsel, as all of
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`you know, our resources are limited. We can only devote so
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`much time to anyone dispute. This case has, quite
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`frankly -- I am not going to get on a soapbox this morning.
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`In point of fact, this case has been one of the more
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`litigious patent matters over which I have presided during
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`my almost ten years on the Bench. And I have presided over
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`a lot of patent cases.
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`It has been a disappointment in that regard,
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`especially because we have such good lawyers here,
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`especially lead counsel, to take nothing away from associate
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`counsel and second seats and all that. But it makes it
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`difficult, two very able advocates, who make reasonable
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`appeals to the Court's rationale or at least hopefully to
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`its intellect.
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`I am going to try to sort through this a
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`little bit. Most especially, the word "fairness" resonates
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`with me, as some of you may know or not.
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`So, Mr. Jacobs, could you, just for a moment,
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`address that issue that Mr. Scheve raises, the issue of,
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`that this just isn't fair, Judge, because we didn't have the
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`time, and even at the pretrial conference
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`we could have
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`said at our pretrial conference, I could have delved into
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`what really happened here in these discovery disputes, what
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 1012, p.11 of 224
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 12 of 224 PagelD #: 9982
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`was -- who was really the bad actor? Was it both of you, my
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`suspicion? Who deserves to suffer, as they say?
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`So ...
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`MR. JACOBS:
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`I don't want to try the Court's
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`patience, regarding go
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`THE COURT: Don't worry about trying the Court's
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`patience. It is an important issue.
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`MR. JACOBS: Let me go through how we got to
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`Motion 1n Limine No.1.
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`Mr. Walters was here at a discovery conference.
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`We had raised for Your Honor the fact that their privilege
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`log seemed not to contain testing references on it. And
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`that we had not gotten Elan's testing documents.
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`Elan's counsel stood before Your Honor and said,
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`The privilege log is complete.
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`I am tired of being, my
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`figurative words for him, I am tired of being beat up about
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`my privilege log.
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`THE COURT: And I expressed concern with that
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`representation.
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`MR. JACOBS: He said the privilege log was
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`complete and that we have maintained clear walls between
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`consulting and testifying experts, as noted in the Court's
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`order on Motion in Limine No.1. Both of those
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`representations were incorrect.
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`That was the predicate for then -- and at that
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`Apotex v. Abraxis - IPR20 18-00 153, Ex. 1012, p.12 of 224
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 13 of 224 PagelD #: 9983
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`hearing , the Court s a id , No more discove ry disputes, and we
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`understood that .
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`When Elan produced Dr. Brittain at his
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`deposition, the night before we got this lengthy
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`466-reference log, I took that deposition , I examined
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`Dr. Brittain on what he had done for Elan in testing. The
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`only question he was allowed to ans wer was that he had
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`tested Abraxane .
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`Every other question : What kind of tests did
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`you do? What was the purpose of the testing? Did it relate
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`to crystallinity? Did it relate to this? Did it relate to
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`that? There was an instruction not to answer .
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`We wrote to Elan several times and said , You
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`can't possibly do this ; he is a testifying expert. It says
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`on the log he was doing testing related to this litigation .
`
`You proceed with Dr . Brittain at your own risk .
`
`I scripted
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`those words , Your Honor , bec ause I wanted to be really clear
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`to Elan very early on what the consequences of the as s ertion
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`they were making with respect to Dr . Brittain were .
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`We then wrote our Motion in Limine. We said ,
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`Here's the history. Elan shouldn't be allowed to criticize
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`our x-ray powder diffraction whe n there i s all this testing
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`evidence that suggested to us, bas ed on the information we
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`had then , Dr. Brittain had done precisely what we had done ,
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`used x-ray powder diffrac tion in various ways , whether on
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.1 3 of 224
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`Case 1:0 cv-00438-GM S Document 624 Filed 06/24/08 Page 14 of 224 PagelD #: 9984
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`Abraxane or a fraction of Abra xane or a sample, we didn't
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`know. We knew only what we knew. We shifted the burden to
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`them in that motion to demonstrate that the privilege was
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`properly asserted .
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`They came forward with a declaration from
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`Dr. Brittain . That declaration said no more than , What I
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`did in the litigation was a different subject than what I am
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`testifying to as an expert. It provided no underlying
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`rationale for that distinction .
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`It provided no subject
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`matter basis . We argued that precise issue at the Motion in
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`Limine hearing before Your Honor.
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`Your Honor observed that you had noted in the
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`margin of one o f
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`the briefs the possibility o f a n order to
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`show cause for contempt. Your Honor said , We are not going
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`there , counsel. But I want to let Elan know that I view
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`this as a very serious matter. And then we worked out , over
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`the course of the Motion in Limine hearing , what's the right
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`remedy here , given the violation of Federal Rule 26 .
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`Then we proposed an order for the Court. Elan
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`took a run at the proposed order with a letter brief. We
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`responded to the letter brief. Then the Court adopted the
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`proposed order , which , itself , lays out the rationale for
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`the adverse inference that the Court i s qoing to instruc t
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`the jury on.
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`There is none of that run up for this. They are
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`Apotex v. Abraxis -IPR201 8-001 53, Ex . 101 2, p.14 of224
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 15 of 224 PagelD #: 9985
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`just showing up at trial and saying, Privilege log,
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`privilege log. Look at these entries on Dr. Desai in
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`particular.
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`Your Honor knows what these cases are like.
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`Here is Elan's privilege log (indicating). These are huge
`
`cases, which where we over-sweep in documents to make sure
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`we don't under-produce. Then we go through these documents,
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`both sides, this is not unique to us, one by one, and we
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`say, No proper assertion of attorney-client privilege. Then
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`we have some back and forth.
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`Then, in this case, for example, with respect to
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`communicate to patent counsel, our team went through each of
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`those and confirmed that it was, in fact, communicated. I t
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`was, in fact, communicated.
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`I don't know how else, absent appointment of
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`Special Masters and all those other things that we do to
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`delve more deeply into this, I don't know how else to
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`suggest this could have been addressed, Your Honor, given
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`where we are. It is unfair to show up at trial and throw
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`this up on the screen in front of the jury.
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`THE COURT: Last word, Mr. Scheve.
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`MR. SCHEVE:
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`I will just address two points.
`
`I
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`am pleased to hear they finally addressed the word
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`"fairness" at the very end other than just a rehash.
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`Your Honor, the record needs to be clear. What
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 1012, p.15 of 224
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`
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 16 of 224 PagelD #: 9986
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`Dr. Brittain did was in his consultation with Mr . Sipio.
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`His contract was to help Mr. Sipio understand some issues.
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`He is continually characterizing what Mr . Brittain did ,
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`Dr. Brittain did, as Elan testing . And then they said ,
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`Well , you proceed with Dr. Brittain at your own risk.
`
`I have reviewed the law on , Can an inference be
`
`drawn from the fact that things were put on privilege? And
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`the law is, There can't be any inference drawn from that,
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`which is what they have invited Your Honor to do .
`
`So we
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`didn't put Dr . Brittain up, bec ause if I had , I would hear
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`on appeal it's waived, that the i s sue is waived.
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`We would simply say, Your Honor , we don't think
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`it is a ppropriate e ither way for people to be ins truc ted
`
`that there is an inference to be drawn when lawyers get
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`information , look at it, and I don't doubt that they looked
`
`at stuff , although in one of the discovery conferences , Your
`
`Honor said, I don't know how a lab notebook can be cla~ed
`
`to be privileged. But they did it.
`
`We put materials on a privilege log , and Your
`
`Honor has never been -- again , it's because Your Honor is
`
`burdened
`
`but we reached a point where there was no
`
`vehicle for either party to get this in front of you for
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`review.
`
`Is this really privileged? You know, entry about,
`
`Well , these are results of experiments , but I plan to tell
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`counsel about it. Of course , you can't hide facts by
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.1 6 of 224
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`
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 17 of 224 PagelD #: 9987
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`saying, somehow cloaking it is something I think I am going
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`to tell them in the future. Our point is if they are going
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`to be able to do it with Dr. Brittain, and we think that is
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`error, in fairness, how can they claim, shield from us
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`experiments and claim that it wouldn't be fair for us to
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`show the jury that they have done -- that they have shielded
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`experiments under claims of privilege.
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`THE COURT: Let me think about this a bit.
`
`Is
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`there anything else?
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`MR. JACOBS: One more fact that is useful, I
`
`think, Your Honor, to understanding the picture here.
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`DX-186 is the actual engagement letter with
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`Dr. Brittain from Mr. Sipio.
`
`THE COURT: Mr. Sipio is the fly in this
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`ointment to a degree, I think, as I recall.
`
`MR. JACOBS: Except two things, Your Honor. No.
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`lit's cc Mr. Bokar, cc Mr. Bokar, and it states as follows,
`
`it's dated November 23, 2005: This letter will confirm that
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`I have retained you as a consultant for your expertise in
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`x-ray crystallography and other analytical techniques
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`suitable for the characterization of chemical compounds
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`present in human pharmaceutical compositions.
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`THE COURT: Are there any other issues that are
`
`more easily disposed than this?
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`MR. SCHEVE: They do plan to call Dr. Desai and
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`Apotex v. Abraxis - IPR20 18-00 153, Ex . 1012, p.17 of 224
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`
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 18 of 224 PagelD #: 9988
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`Dr. Soon-Shiong as a couple of their next witnesses.
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`Dr. Soon-Shiong, who is the CEO, it is a series of newspaper
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`articles about him that they plan to throw up about his work
`
`in diabetes and things of sort. It really becomes character
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`evidence.
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`He is a good man. Look what he has done to
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`fight diabetes, et cetera.
`
`Character evidence shouldn't be coming in.
`
`If
`
`it does, it clearly opens the door to the fraud lawsuit
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`brought by his brother against him. We go down the path,
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`the fraud lawsuit brought against him by Mylan, the
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`securities fraud action that is currently pending against
`
`him in California.
`
`I raise it with Your Honor so that if I
`
`have to ask for an opportunity for sidebar, you know where I
`
`am going.
`
`Secondly, it is pretty clear from what they
`
`intend to do that they are trying to make comparisons of the
`
`embodiment of the '363 patent to the accused infringing
`
`product. And the case law there is very clear that they
`
`can't do that.
`
`So they are not -- they have not been designated
`
`as experts. Clearly, they can come on as fact witnesses and
`
`talk about what they saw, heard, smelled, touched. But I
`
`believe, Your Honor, there will be many instances where what
`
`this devolved into with these two individuals commenting on
`
`Apotex v. Abraxis - IPR20 18-00 153, Ex . 1012, p.18 of 224
`
`
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`Case 1:0 cv-00438-GM S Document 624 Filed 06/24/08 Page 19 of 224 PagelD #: 9989
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`Elan's technology , it is clearly in the nature of expert
`
`testimony.
`
`I note to Your Honor we objec t to that .
`
`I am
`
`asking if you want to deal with that in realtime by sidebar.
`
`We think they have clearly crossed the line
`
`between fact witness and trying to give expert testimony on
`
`their perceptions of the failings of Dr. Liversidge's
`
`invention.
`
`THE COURT: Let's deal with that in realtime.
`
`Did you want to react to that?
`
`MR. JACOBS: On the first one, it actually
`
`wasn't about character evidence.
`
`I didn't mean to suggest
`
`by those documents that we were going to put his character
`
`in play , although we have no regrets about that in any
`
`respect whatsoever.
`
`But, rather, when Mr . Scheve took his
`
`deposition, his qualifi c ations to have made the invention in
`
`question on our side , that is, his qualifications to have
`
`developed Abraxane, were called into question. What we
`
`intended to with demonstrate to the jury that
`
`Dr. Soon-Shiong is -- I hope they take away the inference
`
`that maybe I have taken away , that the man is a genius for
`
`his inventive capabilities. That is why we had it in there.
`
`I definitely don't intend to open the door to other
`
`litigation involving matters unrelated to this dispute. And
`
`I would ask Your Honor to patrol that during the testimony .
`
`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.19 of 224
`
`
`
`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 20 of 224 PagelD #: 9990
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`THE COURT: Mr. Sc heve ?
`
`MR. SCHEVE: Your Honor has already requested
`
`the jury repeatedly , Don't go be influenc ed by what the
`
`media says . Now I have got a s tack of at least ten
`
`newspaper articles about him .
`
`I would suggest that if it's a game of what has
`
`the newspaper written, for everyone that praised him, I c an
`
`find one that critic ized him and accused him of a lot of
`
`devious things.
`
`I think we have cros s ed the line.
`
`If they want to ask him ,
`
`I would like to talk
`
`with you about what you have done , sir, great. But to put
`
`up the newspaper, that this newspaper or that newspaper has
`
`interviewed him ,
`
`I don't belie ve that is appro priate.
`
`MR . JACOBS: That is fine , Your Honor. We don't
`
`have to use the newspaper.
`
`THE COURT: That eliminates that. There was a
`
`second.
`
`MR. JACOBS: The expert issue, it is a fine line
`
`but it's one that, I think, falls our way . We don't intend
`
`them to do an expert comparison in the way that the experts
`
`have. Elan has put their state of mind into play with their
`
`willfulness allegation , What did you think when you s aw the
`
`Elan patents? What did you think when you s aw the Elan
`
`presentation that you were faxed in 1996 ? How did you
`
`evaluate it compared to the technology path you were on?
`
`Apotex v. Abraxis - IPR20 18-00 153, Ex . 101 2, p.20 of 224
`
`
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 21 of 224 PagelD #: 9991
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`That is very much in play and we have to elicit that
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`testimony from them.
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`So that is not a real issue. We do not intend
`
`to ask them, In your expert opinion, Dr. Desai or
`
`Dr. Soon-Shiong.
`
`Where I would ask for a little hit of leeway is
`
`that the words of the witnesses, because they are typically
`
`in front of scientists and they are typically making
`
`presentations, may not always say, My understanding is that.
`
`But I am happy to try to set this up so that when I ask them
`
`a series of questions, I will start out with, Was it your
`
`understanding that, so that it's factual and not expert.
`
`MR. SCHEVE:
`
`I agree with him that how they
`
`perceived something in 1996 or 1995 is fact testimony.
`
`I am
`
`not here to argue against that.
`
`If this gets into, Let's go
`
`to Example 1 in the Liversidge patent, Doctor, why doesn't
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`that do this, that, or the other, that crosses the line to
`
`expert testimony. And it is not reflecting what they saw or
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`thought, heard back in '95-' 96.
`
`THE COURT:
`
`I think what you just described
`
`Mr. Jacobs would agree. Go ahead.
`
`MR. JACOBS: Yes. Except I think it continues
`
`because the lawsuit is filed, and they have kind of put
`
`their state of mind in general in play.
`
`So what they knew exactly in their head in 1996
`
`Apotex v. Abraxis - IPR20 18-00 153, Ex . 1012, p.21 of 224
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`
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`Case 1:0 cv-00438-GMS Document 624 Filed 06/24/08 Page 22 of 224 PagelD #: 9992
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`versus what they have --
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`THE COURT: We are talking about comparisons,
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`comparisons, either directly or indirectly, that are
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`inappropriate, that Mr. Scheve has identified, and you know
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`as fundamental, patent cannot be done, embodiment
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`comparison, that is.
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`MR. JACOBS: Yes.
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`I don't think we are actually
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`going to get into this, Your Honor.
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`THE COURT: Well, let's see how that works out.
`
`Let me take a look at this.
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`We will take a break.
`
`(Rece
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