Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 1 of 224 PageID #: 9971
`1184
`
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`:
`
`Civil Action
`
`ELAN PHARMA INTERNATIONAL
`LIMITED,
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`::
`
`::
`
`::
`
`::
`
`Plaintiff,
`
`v.
`ABRAXIS BIOSCIENCE INC.,
`Defendant.
`
`No. 06-438-GMS
`
`:
`- - -
`Wilmington, Delaware
`Monday, June 9, 2008
`8:30 a.m.
`SIXTH DAY OF TRIAL
`-
`- -
`BEFORE: HONORABLE GREGORY M. SLEET, Chief Judge,
`and a Jury
`
`APPEARANCES:
`JOHN G. DAY, ESQ.
`Ashby & Geddes
`-and-
`STEPHEN SCHEVE, ESQ.,
`LINDA M. GLOVER, ESQ.,
`JEFFREY SULLIVAN, ESQ.,
`LISA A. CHIARINI, ESQ.
`ROBERT RIDDLE, ESQ., and
`PAUL FEHLNER, ESQ.
`Baker Botts LLP
`(Houston, TX)
`-and-
`GREGORY BOKAR, ESQ.
`Counsel - Elan Drug Delivery
`Counsel for Plaintiff
`
`CIPLA EXHIBIT 1012
`Page 1 of 224
`
`
`1184
`
`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`:
`
`Civil Action
`
`ELAN PHARMA INTERNATIONAL
`LIMITED,
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`::
`
`::
`
`::
`
`::
`
`Plaintiff,
`
`v.
`ABRAXIS BIOSCIENCE INC.,
`Defendant.
`
`No. 06-438-GMS
`
`:
`- - -
`Wilmington, Delaware
`Monday, June 9, 2008
`8:30 a.m.
`SIXTH DAY OF TRIAL
`-
`- -
`BEFORE: HONORABLE GREGORY M. SLEET, Chief Judge,
`and a Jury
`
`APPEARANCES:
`JOHN G. DAY, ESQ.
`Ashby & Geddes
`-and-
`STEPHEN SCHEVE, ESQ.,
`LINDA M. GLOVER, ESQ.,
`JEFFREY SULLIVAN, ESQ.,
`LISA A. CHIARINI, ESQ.
`ROBERT RIDDLE, ESQ., and
`PAUL FEHLNER, ESQ.
`Baker Botts LLP
`(Houston, TX)
`-and-
`GREGORY BOKAR, ESQ.
`Counsel - Elan Drug Delivery
`Counsel for Plaintiff
`
`CIPLA EXHIBIT 1012
`Page 1 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 2 of 224 PageID #: 9972
`1185
`
`Please be
`
`APPEARANCES CONTINUED:
`ELENA C. NORMAN, ESQ., and
`MICHELLE SHERETTA BUDICAK, ESQ.
`Young Conaway Stargatt & Taylor, LLP
`-and-
`MICHAEL A. JACOBS, ESQ.,
`EMILY A. EVANS, ESQ.,
`ERIC S. WALTERS, ESQ.,
`DIANA KRUZE, ESQ., and
`ERIK J. OLSON, ESQ.
`Morrison & Foerster
`(San Francisco, CA)
`Counsel for Defendant
`- - - - - -
`THE COURT:
`Good morning, counsel.
`seated for a moment.
`(Counsel respond "Good morning.")
`THE COURT:
`Mr. Jacobs.
`MR. JACOBS: Thank you, Your Honor. Mr. Scheve
`has signaled an intent to examine Dr. Desai, our first
`witness this morning, about privilege log entries in
`Dr. Desai's notebook.
`We have seen a graphic displayed on the screen
`in which Mr. Scheve would display those privilege log
`entries or notebook pages with privilege redactions on them.
`Mr. Scheve's contention is because the Court has
`decreed that an adverse inference will be drawn from
`Dr. Brittain's related privilege assertions, Elan should be
`able to develop a record that Abraxis asserted the privilege
`over, in this case, Dr. Desai's notebook entries.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 2 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 3 of 224 PageID #: 9973
`1186
`
`The two are not parallel. The Court made
`findings with respect to Dr. Brittain in order to even get
`into examining a witness on the stand about topics that bear
`on attorney-client privilege.
`Our position is the Court
`would have to make similar findings.
`We think Mr. Scheve, Elan, should be directed
`not to raise any such issues or any such implication to
`examine Dr. Desai on any topics that bear on attorney-client
`privilege issues during the cross-examination of Dr. Desai.
`THE COURT:
`Okay. Mr. Scheve.
`MR. SCHEVE: Thank you, Your Honor.
`If I could, beforehand, Mr. Day couldn't be here
`today. He says there is a small event going on this
`evening.
`
`He took the day off. Huh?
`THE COURT:
`MR. SCHEVE: Or at least half the day. He is
`dealing with some issues Your Honor may be familiar with.
`THE COURT:
`Indeed.
`Our children's graduation
`from high school.
`MR. SCHEVE: Yes.
`Your Honor, if I may put up a slide, what this
`is about, and there has been a Bench brief filed by Abraxis
`that cites the case authority.
`MR. JACOBS: May we provide that to Your Honor?
`THE COURT:
`Yes.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 3 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 4 of 224 PageID #: 9974
`1187
`
`MR. SCHEVE: And that case authority on Page 2,
`Your Honor, if I may quote from, in the first instance, from
`Weinstein's federal evidence, saying, The claim of a
`privilege is not a proper subject of comment by judge or
`counsel. No inferences may be drawn therefrom.
`Then, later on in the Ninth Circuit, they cite
`another case, that there could be no negative inference from
`a defendant witness' claims of attorney-client privilege.
`I raise that because what we did with
`Dr. Brittain is create a privilege log. You will recall, he
`signed an agreement with an attorney named Sipio and was
`providing consultation with Mr. Sipio. Every one of those
`was placed on a privilege log.
`I think the record, and Your Honor will recall,
`the position we urged upon the Court is it would be
`inappropriate for an inference to be drawn from the fact
`that we claimed those are privileged.
`Your Honor has, to this date, said that you will
`allow that inference to be drawn. This is what has occurred
`during discovery, which is the image up here.
`What Abraxis has done, Your Honor, has claimed
`privilege over, quote, results from experiments that they,
`"to" communicate to the counsel. Not reflecting anything
`that was communicated to counsel, or Desai lab notebook
`reflecting information to communicate to patent counsel
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 4 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 5 of 224 PageID #: 9975
`1188
`
`regarding product composition.
`They have, I don't remember what the number is
`there, it is page after page after page of testimony results
`from the lab notebook that I can't see because they are
`claiming it's privileged.
`I don't understand how they are now going to
`call Dr. Desai, who is going to testify, and be able to
`claim that a lab notebook is privileged when it clearly
`doesn't say, Reflects communication with attorney. This is
`lab results.
`
`My view, Your Honor, is while we think the
`proper ruling, and I say this, Your Honor, because none of
`us want to come back and try this case again, we think it is
`legal error for an inference to be drawn when counsel, when
`Mr. Brittain's gave us those documents, that he consulted
`with Mr. Sipio on, we put them on a privilege log. There
`was never a motion brought to compel. Never a request that
`Your Honor look at it to determine whether, in fact, it was
`privileged.
`
`And now they have asked you, they want a
`negative inference to be drawn from the fact we put it up
`there. If you look at the cases cited in their brief, it's
`error.
`
`But they want to be able to pull Dr. Brittain in
`here tomorrow and go through that.
`I am saying, If that's
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 5 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 6 of 224 PageID #: 9976
`1189
`
`Your Honor's ruling, why can they make reference to a
`privilege log that's never been reviewed, for which there
`has never been a ruling, and our contention is, as we have
`argued in the past, and I don't mean to rehash, but our view
`is that you can't draw -- there can't be -- what's the right
`word -- a repercussion until there is first a predicate act.
`THE COURT:
`Which motion in limine was this?
`Does anybody remember?
`MR. SCHEVE: They attempted to limit us to
`Mr. Brittain.
`MS. GLOVER: No. 1.
`MR. JACOBS: No. 1.
`THE COURT:
`By Abraxis?
`MR. JACOBS: Correct.
`MR. SCHEVE: If they are going to be able to
`call Dr. Brittain tomorrow and Mr. Jacobs has advised me he
`has got him under subpoena, he would be here today but he is
`taking care of his grandchild, that they are putting him on
`solely to put up that privilege log and argue that there
`must be something there that is being withheld from somebody
`and get a negative inference.
`Our view is, while we don't think it is
`appropriate either way, why should they be allowed to do it
`and then I can't do the same thing? That's just not fair.
`THE COURT:
`Okay.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 6 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 7 of 224 PageID #: 9977
`1190
`
`Mr. Jacobs.
`MR. JACOBS: So there are a couple of issues now
`getting rolled up into one. No. 1, we are very comfortable
`with the record on Motion in Limine No. 1. We are very,
`very comfortable with the record, including the observation
`by the Court about the seriousness of the violation that led
`to the ruling on Motion in Limine No. 1.
`No. 2, we can't, in the ten minutes before
`witness' testimony is supposed to start, we can't go through
`each of the privilege log entries and have a reargument
`about these privilege log entries.
`I can tell you several
`things, if it will comfort the Court. We went through each
`of these entries on a one-by-one basis with Dr. Desai to
`make sure that the privilege was properly being asserted.
`We did it because there was back and forth between counsel
`about the privilege log entries.
`Dr. Desai's notebooks relate to a wide variety
`of topics, some of them related to the litigation. We will
`be talking about those in his testimony. But they cover any
`number of other research areas, other patent issues.
`When we are talking about test results, for
`example, it might be that Abraxis was conducting a test
`specifically related to some patent proceeding that was
`going on somewhere in the world. But I can't get into each
`of those now. It would be unfair to try to get into each of
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 7 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 8 of 224 PageID #: 9978
`1191
`
`That's why it's inappropriate to do exactly what
`those now.
`Elan's counsel is doing right here. That's why Weinstein's
`directive is so compelling, because it can look bad when you
`splash it up on the screen.
`So, No. 1, we are very comfortable with the
`record on Motion in Limine No. 1.
`No. 2, we shouldn't be getting into Abraxis'
`assertions of privilege.
`No. 3, the question of what to do about -- it is
`useful, I think. That is the Bench memo on what they
`propose to do, I believe.
`THE COURT:
`Your memo is?
`MR. JACOBS: Yes. There are a couple of
`Brittain issues coming up. So we have a couple of pieces of
`paper.
`
`Go ahead.
`THE COURT:
`MR. JACOBS: No. 3, if Mr. Scheve's concern is
`the specific concern that I would raise the word "privilege"
`with Dr. Brittain as opposed to a log of documents that were
`not produced to us, if that would enable us to get past this
`little imbroglio we are having here, I don't need to use the
`word "privilege" in examining Dr. Brittain.
`All the jury
`needs to understand is Dr. Brittain did some testing, he did
`it on Abraxane. The entries on the log that we got leave
`aside the word "privilege," describe that not in very much
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 8 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 9 of 224 PageID #: 9979
`1192
`
`detailed, nothing like this, testing, you may recall the log
`testing, testing related to the litigation.
`I do want the jury to see the lengthy list of
`documents that we didn't get, because it does have a
`substantial impact.
`But I don't need to use the word "privilege."
`THE COURT:
`Mr. Scheve, your reaction?
`MR. SCHEVE: I didn't fall off the turnip truck
`yesterday, Judge, in order to preserve my appeal. Clearly,
`they are trying to invade the privilege with regard to
`Mr. Brittain, I shouldn't be saying that, but with regard to
`Dr. Brittain, when you put it on a privilege log, I am not
`going to be coerced by opposing counsel, very good counsel,
`to now disclose that privilege, but them assume that
`everything on that list was Abraxane, that Dr. Brittain did.
`I can tell you, that is not the case.
`What they are trying to do is whipsaw me in and
`stand up and, if you will, waive the privilege that existed
`between Mr. Sipio and Dr. Brittain. And I have already told
`Your Honor that to the extent there was any testing done by
`Dr. Brittain on Abraxane, he didn't do any x-ray powder
`diffraction, and what he would like to do is point to a
`privilege log and ask this, Your Honor, to instruct the jury
`there is an inference that somehow all of this was done and
`he found some negative results and the only relevant issue
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 9 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 10 of 224 PageID #: 9980
`1193
`
`would be on crystallinity, when I have already represented
`to Your Honor he didn't test Abraxane using x-ray powder
`diffraction, or solid state NMR.
`So his relationship was with Mr. Sipio. If they
`want to draw that inference, and, frankly, Your Honor, I
`don't believe, I think it's error and none of us want to
`come back, I don't know how they can draw an inference from
`a privilege log. But look at these entries. Lab notebooks,
`it's information to communicate resulting results of
`experiments.
`
`If Your Honor wants briefs, I can show and this
`has been part of the problem in this lawsuit, we have heard
`about how much work there is.
`I can show you examples where
`they put something on their privilege log. It's still
`there. And then they inadvertently gave it to us. And
`there is nothing privileged in there other than it says,
`Entries of crystallinity, but it's still on the privilege
`log.
`I can go through it, if we have a further hearing, I
`can show you those sorts of materials.
`All I am urging, Your Honor, our position,
`again, that this is error and neither side ought to be
`getting into stuff that is put on a privilege log.
`Your Honor has rules that we have attempted to
`I would love to have been able to bring to Your
`abide by.
`Honor's attention these claims that a lab notebook is
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 10 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 11 of 224 PageID #: 9981
`1194
`
`privileged. But Your Honor had said, I am not going to hear
`anymore discovery disputes. That's why we are where we are.
`THE COURT:
`After a point, counsel, as all of
`you know, our resources are limited. We can only devote so
`much time to any one dispute.
`This case has, quite
`frankly -- I am not going to get on a soapbox this morning.
`In point of fact, this case has been one of the more
`litigious patent matters over which I have presided during
`my almost ten years on the Bench.
`And I have presided over
`a lot of patent cases.
`It has been a disappointment in that regard,
`especially because we have such good lawyers here,
`especially lead counsel, to take nothing away from associate
`counsel and second seats and all that. But it makes it
`difficult, two very able advocates, who make reasonable
`appeals to the Court's rationale or at least hopefully to
`its intellect.
`I am going to try to sort through this a
`little bit. Most especially, the word "fairness" resonates
`with me, as some of you may know or not.
`So, Mr. Jacobs, could you, just for a moment,
`address that issue that Mr. Scheve raises, the issue of,
`that this just isn't fair, Judge, because we didn't have the
`time, and even at the pretrial conference -- we could have
`said at our pretrial conference, I could have delved into
`what really happened here in these discovery disputes, what
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 11 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 12 of 224 PageID #: 9982
`1195
`
`patience.
`
`was -- who was really the bad actor? Was it both of you, my
`suspicion?
`Who deserves to suffer, as they say?
`So...
`MR. JACOBS: I don't want to try the Court's
`patience, regarding go --
`THE COURT:
`Don't worry about trying the Court's
`It is an important issue.
`MR. JACOBS: Let me go through how we got to
`Motion in Limine No. 1.
`Mr. Walters was here at a discovery conference.
`We had raised for Your Honor the fact that their privilege
`log seemed not to contain testing references on it. And
`that we had not gotten Elan's testing documents.
`Elan's counsel stood before Your Honor and said,
`The privilege log is complete. I am tired of being, my
`figurative words for him, I am tired of being beat up about
`my privilege log.
`THE COURT:
`representation.
`MR. JACOBS: He said the privilege log was
`complete and that we have maintained clear walls between
`consulting and testifying experts, as noted in the Court's
`order on Motion in Limine No. 1. Both of those
`representations were incorrect.
`That was the predicate for then -- and at that
`
`And I expressed concern with that
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 12 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 13 of 224 PageID #: 9983
`1196
`
`hearing, the Court said, No more discovery disputes, and we
`understood that.
`When Elan produced Dr. Brittain at his
`deposition, the night before we got this lengthy
`466-reference log, I took that deposition, I examined
`Dr. Brittain on what he had done for Elan in testing. The
`only question he was allowed to answer was that he had
`tested Abraxane.
`Every other question: What kind of tests did
`you do? What was the purpose of the testing? Did it relate
`to crystallinity? Did it relate to this? Did it relate to
`that?
`There was an instruction not to answer.
`We wrote to Elan several times and said, You
`can't possibly do this; he is a testifying expert. It says
`on the log he was doing testing related to this litigation.
`You proceed with Dr. Brittain at your own risk.
`I scripted
`those words, Your Honor, because I wanted to be really clear
`to Elan very early on what the consequences of the assertion
`they were making with respect to Dr. Brittain were.
`We then wrote our Motion in Limine. We said,
`Here's the history.
`Elan shouldn't be allowed to criticize
`our x-ray powder diffraction when there is all this testing
`evidence that suggested to us, based on the information we
`had then, Dr. Brittain had done precisely what we had done,
`used x-ray powder diffraction in various ways, whether on
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 13 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 14 of 224 PageID #: 9984
`1197
`
`Abraxane or a fraction of Abraxane or a sample, we didn't
`know. We knew only what we knew.
`We shifted the burden to
`them in that motion to demonstrate that the privilege was
`properly asserted.
`They came forward with a declaration from
`Dr. Brittain. That declaration said no more than, What I
`did in the litigation was a different subject than what I am
`testifying to as an expert. It provided no underlying
`rationale for that distinction. It provided no subject
`matter basis. We argued that precise issue at the Motion in
`Limine hearing before Your Honor.
`Your Honor observed that you had noted in the
`margin of one of the briefs the possibility of an order to
`show cause for contempt.
`Your Honor said, We are not going
`there, counsel. But I want to let Elan know that I view
`this as a very serious matter. And then we worked out, over
`the course of the Motion in Limine hearing, what's the right
`remedy here, given the violation of Federal Rule 26.
`Then we proposed an order for the Court. Elan
`took a run at the proposed order with a letter brief. We
`responded to the letter brief. Then the Court adopted the
`proposed order, which, itself, lays out the rationale for
`the adverse inference that the Court is going to instruct
`the jury on.
`
`There is none of that run up for this.
`
`They are
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 14 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 15 of 224 PageID #: 9985
`1198
`
`just showing up at trial and saying, Privilege log,
`privilege log.
`Look at these entries on Dr. Desai in
`particular.
`
`Your Honor knows what these cases are like.
`Here is Elan's privilege log (indicating).
`These are huge
`cases, which where we over-sweep in documents to make sure
`we don't under-produce.
`Then we go through these documents,
`both sides, this is not unique to us, one by one, and we
`say, No proper assertion of attorney-client privilege. Then
`we have some back and forth.
`Then, in this case, for example, with respect to
`communicate to patent counsel, our team went through each of
`those and confirmed that it was, in fact, communicated. It
`was, in fact, communicated.
`I don't know how else, absent appointment of
`Special Masters and all those other things that we do to
`delve more deeply into this, I don't know how else to
`suggest this could have been addressed, Your Honor, given
`where we are. It is unfair to show up at trial and throw
`this up on the screen in front of the jury.
`THE COURT:
`Last word, Mr. Scheve.
`MR. SCHEVE: I will just address two points. I
`am pleased to hear they finally addressed the word
`"fairness" at the very end other than just a rehash.
`Your Honor, the record needs to be clear. What
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 15 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 16 of 224 PageID #: 9986
`1199
`
`Dr. Brittain did was in his consultation with Mr. Sipio.
`His contract was to help Mr. Sipio understand some issues.
`He is continually characterizing what Mr. Brittain did,
`Dr. Brittain did, as Elan testing. And then they said,
`Well, you proceed with Dr. Brittain at your own risk.
`I have reviewed the law on, Can an inference be
`drawn from the fact that things were put on privilege? And
`the law is, There can't be any inference drawn from that,
`which is what they have invited Your Honor to do. So we
`didn't put Dr. Brittain up, because if I had, I would hear
`on appeal it's waived, that the issue is waived.
`We would simply say, Your Honor, we don't think
`it is appropriate either way for people to be instructed
`that there is an inference to be drawn when lawyers get
`information, look at it, and I don't doubt that they looked
`at stuff, although in one of the discovery conferences, Your
`Honor said, I don't know how a lab notebook can be claimed
`to be privileged. But they did it.
`We put materials on a privilege log, and Your
`Honor has never been -- again, it's because Your Honor is
`burdened -- but we reached a point where there was no
`vehicle for either party to get this in front of you for
`review. Is this really privileged? You know, entry about,
`Well, these are results of experiments, but I plan to tell
`counsel about it. Of course, you can't hide facts by
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 16 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 17 of 224 PageID #: 9987
`1200
`
`saying, somehow cloaking it is something I think I am going
`to tell them in the future. Our point is if they are going
`to be able to do it with Dr. Brittain, and we think that is
`error, in fairness, how can they claim, shield from us
`experiments and claim that it wouldn't be fair for us to
`show the jury that they have done -- that they have shielded
`experiments under claims of privilege.
`THE COURT:
`Let me think about this a bit. Is
`there anything else?
`MR. JACOBS: One more fact that is useful, I
`think, Your Honor, to understanding the picture here.
`DX-186 is the actual engagement letter with
`Dr. Brittain from Mr. Sipio.
`THE COURT:
`Mr. Sipio is the fly in this
`ointment to a degree, I think, as I recall.
`MR. JACOBS: Except two things, Your Honor. No.
`1 it's cc Mr. Bokar, cc Mr. Bokar, and it states as follows,
`it's dated November 23, 2005:
`This letter will confirm that
`I have retained you as a consultant for your expertise in
`x-ray crystallography and other analytical techniques
`suitable for the characterization of chemical compounds
`present in human pharmaceutical compositions.
`THE COURT: Are there any other issues that are
`more easily disposed than this?
`MR. SCHEVE: They do plan to call Dr. Desai and
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 17 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 18 of 224 PageID #: 9988
`1201
`
`Dr. Soon-Shiong as a couple of their next witnesses.
`Dr. Soon-Shiong, who is the CEO, it is a series of newspaper
`articles about him that they plan to throw up about his work
`in diabetes and things of sort. It really becomes character
`evidence.
`
`He is a good man. Look what he has done to
`fight diabetes, et cetera.
`Character evidence shouldn't be coming in. If
`it does, it clearly opens the door to the fraud lawsuit
`brought by his brother against him. We go down the path,
`the fraud lawsuit brought against him by Mylan, the
`securities fraud action that is currently pending against
`him in California.
`I raise it with Your Honor so that if I
`have to ask for an opportunity for sidebar, you know where I
`am going.
`
`Secondly, it is pretty clear from what they
`intend to do that they are trying to make comparisons of the
`embodiment of the '363 patent to the accused infringing
`product. And the case law there is very clear that they
`can't do that.
`So they are not -- they have not been designated
`as experts. Clearly, they can come on as fact witnesses and
`talk about what they saw, heard, smelled, touched. But I
`believe, Your Honor, there will be many instances where what
`this devolved into with these two individuals commenting on
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 18 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 19 of 224 PageID #: 9989
`1202
`
`Elan's technology, it is clearly in the nature of expert
`testimony.
`I note to Your Honor we object to that. I am
`asking if you want to deal with that in realtime by sidebar.
`We think they have clearly crossed the line
`between fact witness and trying to give expert testimony on
`their perceptions of the failings of Dr. Liversidge's
`invention.
`
`Let's deal with that in realtime.
`THE COURT:
`Did you want to react to that?
`MR. JACOBS: On the first one, it actually
`wasn't about character evidence. I didn't mean to suggest
`by those documents that we were going to put his character
`in play, although we have no regrets about that in any
`respect whatsoever.
`But, rather, when Mr. Scheve took his
`deposition, his qualifications to have made the invention in
`question on our side, that is, his qualifications to have
`developed Abraxane, were called into question. What we
`intended to with demonstrate to the jury that
`Dr. Soon-Shiong is -- I hope they take away the inference
`that maybe I have taken away, that the man is a genius for
`his inventive capabilities. That is why we had it in there.
`I definitely don't intend to open the door to other
`litigation involving matters unrelated to this dispute. And
`I would ask Your Honor to patrol that during the testimony.
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 19 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 20 of 224 PageID #: 9990
`1203
`
`Mr. Scheve?
`THE COURT:
`MR. SCHEVE: Your Honor has already requested
`the jury repeatedly, Don't go be influenced by what the
`media says. Now I have got a stack of at least ten
`newspaper articles about him.
`I would suggest that if it's a game of what has
`the newspaper written, for every one that praised him, I can
`find one that criticized him and accused him of a lot of
`devious things. I think we have crossed the line.
`If they want to ask him, I would like to talk
`with you about what you have done, sir, great. But to put
`up the newspaper, that this newspaper or that newspaper has
`interviewed him, I don't believe that is appropriate.
`MR. JACOBS: That is fine, Your Honor. We don't
`have to use the newspaper.
`THE COURT:
`That eliminates that. There was a
`
`second.
`
`MR. JACOBS: The expert issue, it is a fine line
`but it's one that, I think, falls our way.
`We don't intend
`them to do an expert comparison in the way that the experts
`have.
`Elan has put their state of mind into play with their
`willfulness allegation, What did you think when you saw the
`Elan patents? What did you think when you saw the Elan
`presentation that you were faxed in 1996? How did you
`evaluate it compared to the technology path you were on?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 20 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 21 of 224 PageID #: 9991
`1204
`
`That is very much in play and we have to elicit that
`testimony from them.
`So that is not a real issue. We do not intend
`to ask them, In your expert opinion, Dr. Desai or
`Dr. Soon-Shiong.
`Where I would ask for a little bit of leeway is
`that the words of the witnesses, because they are typically
`in front of scientists and they are typically making
`presentations, may not always say, My understanding is that.
`But I am happy to try to set this up so that when I ask them
`a series of questions, I will start out with, Was it your
`understanding that, so that it's factual and not expert.
`MR. SCHEVE: I agree with him that how they
`perceived something in 1996 or 1995 is fact testimony. I am
`not here to argue against that. If this gets into, Let's go
`to Example 1 in the Liversidge patent, Doctor, why doesn't
`that do this, that, or the other, that crosses the line to
`expert testimony. And it is not reflecting what they saw or
`thought, heard back in '95-'96.
`THE COURT:
`I think what you just described
`Mr. Jacobs would agree. Go ahead.
`MR. JACOBS: Yes. Except I think it continues
`because the lawsuit is filed, and they have kind of put
`their state of mind in general in play.
`So what they knew exactly in their head in 1996
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 21 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 22 of 224 PageID #: 9992
`1205
`
`versus what they have --
`We are talking about comparisons,
`THE COURT:
`comparisons, either directly or indirectly, that are
`inappropriate, that Mr. Scheve has identified, and you know
`as fundamental, patent cannot be done, embodiment
`comparison, that is.
`MR. JACOBS: Yes. I don't think we are actually
`going to get into this, Your Honor.
`THE COURT:
`Well, let's see how that works out.
`Let me take a look at this.
`We will take a break.
`(Recess taken.)
`THE COURT:
`Please, take your seats for a
`
`moment.
`
`As I indicated earlier, Mr. Scheve, the issue of
`fairness does resonate with me quite profoundly.
`Having
`said that, I am going to rule in Elan's favor on this, in
`the brief time we have available to us, because now I have
`had a jury waiting in a very hot and overheated room. You
`may or may not know that the rest of this building is not as
`comfortable as this courtroom and I am going to let them out
`of that box. Given the limited amount of time that I have
`had to consider and reconsider Brittain and now the issue
`raised with regard to, it's Desai, I believe, I believe
`there are some material factual differences and
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 22 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 23 of 224 PageID #: 9993
`1206
`
`circumstances.
`But I want to redial back to an option that I
`gave you during the pretrial conference, Mr. Scheve. That
`was to select the Motions in Limine that you felt were most
`critical.
`This, with all respect, I would have suggested
`might have been one better heard at that time when we had
`more time, when you would have had more time to write, I
`would have had more time to have the benefit of those
`writings around further argument.
`That aside, you made the election you made. You
`did review it at sidebar. That doesn't send me off on an
`aimless, mindless search willy-nilly trying to anticipate
`what your arguments may or may not be. Elan has presented
`the Court, I think, a position that is legally correct.
`You may be right, and at the end of the day, the
`Federal Circuit may say, Sleet, you blew it. It won't be
`the first time. I don't say that blithely.
`But we do what
`we do as trial judges, that is, make the best call that we
`can make under, oftentimes, rather stressful circumstances.
`This is one of them.
`I am going to make the call to agree with
`Abraxis in this situation and grant the request that is
`provided in their conclusion at Page 3 of their Bench brief.
`You have been provided a copy of that, have you not,
`Mr. Scheve?
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`CIPLA EXHIBIT 1012
`Page 23 of 224
`
`
`
`Case 1:06-cv-00438-GMS Document 624 Filed 06/24/08 Page 24 of 224 PageID #: 9994
`1207
`
`MR. SCHEVE: I have, Your Honor.
`THE COURT:
`That is how this examination will
`proceed, without forcing the invocation of the privilege.
`And we will proceed from there.
`Thank you, Your Honor.
`MR. SCHEVE: Understood.
`MR. JACOBS: Your Honor, so the record is clear,
`I think I heard Elan a couple of times in there.
`You are
`ruling in favor of Abraxis.
`THE COURT:
`Yes. If I misspoke at any point and
`transposed the parties, it should be clear that
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
