`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` + + + + +
`____________________________
` :
`IN THE MATTER OF: :
` :
`FLATWING PHARMACEUTICALS, :
`LLC AND MYLAN : Case Nos.
`PHARMACEUTICALS, LLC, : IPR2018-00168,
` : 2018-00169,
` Petitioners, : 2018-00170,
` : 2018-00171
` v. :
` : U.S. Patent Nos.
`ANACOR PHARMACEUTICALS, INC.: 9,549,938,
` : 9,566,289,
` Patent Owner. : 9,566,290,
` : 9,572,823
`____________________________:
` Wednesday,
` November 7, 2018
` Washington, D.C.
`
`DEPOSITION OF:
` MAJELLA E. LANE
`called for examination by Counsel for the
`Petitioner FlatWing Pharmaceuticals, pursuant to
`Notice of Deposition, at the law offices of
`Williams & Connolly LLP, located at 725 12th
`Street NW, when were present on behalf of the
`respective parties:
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 1
`
`
`
`2
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`APPEARANCES:
`
`On Behalf of Petitioner FlatWing
`Pharmaceuticals, LLC:
`PHILIP D. SEGREST, JR., ESQ.
`Husch Blackwell LLP
`120 South Riverside Plaza
`Suite 2200
`Chicago, Illinois 60606
`312-526-1548
`philip.segrest@huschblackwell.com
`
`On Behalf of Patent Owner Anacor
`Pharmaceuticals, Inc.:
`AARON P. MAURER, ESQ.
`ANTHONY H. SHEH, ESQ.
`Williams & Connolly LLP
`725 12th Street NW
`Washington, D.C. 20005
`202-434-5282 (Maurer)
`202-434-5436 (Sheh)
`amaurer@wc.com
`asheh@wc.com
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 2
`
`
`
`3
`
` CONTENTS
`
`WITNESS DIRECT CROSS REDIRECT RECROSS
`
`Majella Lane 4 -- -- --
`
`EXHIBIT NO. PAGE
`
`2014 IPR 2018-00168, -00169, -00170,
` and -00171 . . . . . . . . . . . . . . . . . 9
`1046 FlatWing Exhibit . . . . . . . . . . . . . .14
`1007 Austin Reference . . . . . . . . . . . . . .46
`1014 Final Written Decision . . . . . . . . . . .48
`1001 '938 Patent. . . . . . . . . . . . . . . . .71
`1040 Exploration for Dose Response. . . . . . . .72
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 3
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` P-R-O-C-E-E-D-I-N-G-S
` 10:23 a.m.
`WHEREUPON,
` MAJELLA E. LANE
`was called as a witness by Counsel for the
`Petitioner and, having been first duly sworn,
`assumed the witness stand, was examined and
`testified as follows:
` DIRECT EXAMINATION
` BY MR. SEGREST:
` Q Good morning, Dr. Lane. I'm Philip
`Segrest. I'm representing FlatWing this morning.
`We had a scheduling error that's delayed our
`start a little bit, and I apologize for that.
`That was my fault. But we're getting started,
`and we're counting the delay against my time that
`I would've had with you. So we'll try to get
`done as quickly as we can.
` MR. MAURER: Before you go on, let me
`just -- if I could enter my appearance on the --
` MR. SEGREST: Sure.
` MR. MAURER: -- record too. Aaron
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 4
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`Maurer for Patent Owner. Here with me is Tony
`Sheh. Thank you.
` BY MR. SEGREST:
` Q Dr. Lane, have you been deposed
`before?
` A Yes.
` Q And how often?
` A I think it would be seven times at
`this stage.
` Q And do you remember what the matters
`were at which you were previously deposed?
` A Yes. I'm thinking chronologically the
`first case was a Lidoderm case, and it was
`against Watson. There were two other depositions
`in connection with that case, and they were for
`Hisamitsu and I think the other company was Nova.
` The next one I recall was a case for
`Auxilium against Watson again. There was a
`deposition for Galderma against Watson. There
`was a deposition for the previous nail case
`related to this case, and I think that's all that
`I recall at this point.
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 5
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` Q Okay. So in the first few
`depositions, were you retained by Watson?
` A No, I was retained by two -- two
`companies, Teikoku and Endo.
` Q And the Lidoderm case, was that about
`a transdermal patch?
` A It's -- it's actually more correct to
`say it's a topical patch, but it was a patch.
` Q And that was for a topical analgesic?
` A It's an analgesic. It is used to
`treat postherpetic neuralgia in patients who've
`had shingles. Actually, there's one other
`deposition I recall. There was a case -- the
`Lidoderm case came back in I think what's called
`antitrust matter. And in that case, I was
`working for Watson, Endo, and I think Teikoku
`again.
` Q And in the Caldera matter, who
`retained you?
` A In the?
` Q Caldera.
` A Galderma.
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 6
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` Q Galderma?
` A Galderma is the company --
` Q Okay.
` A -- they had a patent on a topical
`formulation.
` Q And in the previous nail case, that
`was when you were testifying for Anacor
`previously?
` A Yes.
` Q So you're familiar with how the
`deposition process works. But I'll just go over
`the basic guidelines for it. There's a court
`reporter here to take down everything you say.
`I'll ask questions. You will answer to the best
`of your ability. Since she's got to write down
`what we say, I'll try not to interrupt you and
`you'll try not to speak over me.
` You'll need to give verbal responses
`and a "yes" or a "no," gesturing or nodding or
`shaking your head is not something that can be
`taken down as well. If you need to take a break
`at any point, let me know and we'll take a break.
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 7
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`I might ask you to answer a question if it's
`pending at the time. If you don't understand a
`question, feel free to ask for clarification.
` You're under oath. It's just like a
`court proceeding. One difference is that we
`don't have a judicial officer here to rule on any
`objections that your counsel might make. So your
`counsel may make objections from time to time.
`But because there's nobody here to rule on them,
`unless counsel specifically instructs you not to
`answer, you'll need to go ahead and answer to the
`best of your ability.
` Do you have any questions about
`deposition process or how we proceed?
` A No.
` MR. MAURER: Just an administrative
`matter, Phil. But I'm not sure which caption we
`provided the court reporter with. I want to make
`sure it was the correct one for the joined
`proceedings. I believe there was an order from
`the Board that changed the caption from the
`original one.
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 8
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` MR. SEGREST: So this is the Notice of
`Deposition that was filed, and I believe it's
`paper number 17 in the 168 matter which is what I
`gave to the court reporter. So it doesn't have
`the paper number on there, but I'm pretty sure
`that's paper number 17 in the 168 matter. But
`that's the whole caption I think.
` MR. MAURER: I believe it is --
` MR. SEGREST: Okay.
` MR. MAURER: -- as it mentions both
`FlatWing and Mylan.
` BY MR. SEGREST:
` Q So did you submit four declarations as
`evidence in these matters?
` A Yes.
` Q I'm handing you what's Exhibit 2014 in
`the matter IPR 2018-00168, and I'm going to refer
`to these as the -00168, -00169, -00170, and -
`00171 matters.
` (Whereupon, the above-referred to
`document was marked as Petitioner's Exhibit 2014
`for identification.)
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`
`www.nealrgross.com
`FlatWing Ex. 1044, p. 9
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` BY MR. SEGREST:
` Q Now is this the declaration you
`submitted in the -00168 matter?
` A Yes.
` Q I'm handing you what's been marked as
`Exhibit 2014 also. Is this the declaration that
`you submitted on the -00169 matter?
` A Yes, it is.
` Q Another Exhibit 2014. Is this the
`declaration you submitted on the -00170 matter?
`Did I give you two copies?
` MR. MAURER: It's just one.
` THE WITNESS: Yes, it is.
` BY MR. SEGREST:
` Q And this is the fourth exhibit, 2014.
`Is this the declaration you submitted in the -
`00171 matter?
` A Yes, it is.
` Q Other than the patent numbers and the
`specific claim language as it's referenced in
`your declarations, do you know of any other
`differences between these four declarations?
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 10
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` A No.
` Q Did you give an opinion as to
`obviousness in any of these four declarations?
` MR. MAURER: Objection to form.
` THE WITNESS: As far as I understand,
`I've not given any opinion on obviousness.
` BY MR. SEGREST:
` Q Okay. For any of the four patents
`that are covered here, right?
` A Again, I wasn't asked to give an
`opinion on obviousness.
` Q When were you retained in these four
`IPR matters?
` A I believe it was January 2018.
` Q And who contacted you about being
`retained?
` A I think it was Mr. Maurer.
` Q Are you currently retained as an
`expert witness in any other litigation or patent
`office matters?
` A Yes.
` Q There are some litigations that relate
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 11
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`to some of these same patents. Are you retained
`as an expert in those?
` A Not that I am aware of.
` Q Okay. Can you tell me what other
`matters you're retained in currently?
` A There is a case for Allergan, but I
`think that there may be a change in the case
`because of a company takeover or purchase. So
`I'm not quite sure who I'm working with over
`there.
` Q Okay. Do you know what -- does it
`relate to a particular pharmaceutical product?
` A It's a cream, a topical cream for
`acne.
` Q Do you know the brand name or the
`generic name of the active ingredient?
` A Aczone, A-C-Z-O-N-E.
` Q Are you retained in any other
`litigations at this time?
` A There -- there is another product, but
`I can't think of the name of it. It's a
`psoriasis product.
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 12
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` Q And for whom are you retained for that
`psoriasis product?
` A Galderma.
` Q Do you charge the same rate for your
`time in all of those expert witness matters?
` A I try to, yes.
` Q And what rate do you charge?
` A I think it's currently 350 English
`pounds per hour.
` Q Do you know how many hours you've
`spent on these IPR matters that you hear about
`today?
` A I could -- well, I can try and do the
`math for you. Sorry, can I have a pen?
` Q Yes.
` A I need to do some --
` Q I don't think I've got a pencil, but
`I've got a pen. And you could use this --
` A Thank you.
` Q -- for paper.
` A So I'm coming up with approximately 80
`hours.
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`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 13
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` MR. SEGREST: Okay and can you put a
`sticker on that as Exhibit 1046?
` (Whereupon, the above-referred to
`document was marked as Petitioner's Exhibit 1046
`for identification.)
` BY MR. SEGREST:
` Q I'm sorry. How much time did you say
`it was?
` A Eighty.
` Q And did that include that your
`preparation for the deposition today?
` A Yes.
` Q So what did you do to prepare to
`testify today?
` A So I met with counsel and I reviewed
`my reports and I reviewed the references that I
`have cited in my reports.
` Q Now, you used the word "reports". Are
`you referring to the declarations that are
`Exhibit 2014?
` A Yes, I meant my declarations.
` Q How long did you met with counsel?
`
`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 14
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` A Over two days, approximately ten
`hours.
` (Pause.)
` BY MR. SEGREST:
` Q And you say you reviewed the materials
`cited, those are the various exhibits that are
`cited in your report?
` A Yes.
` Q And pick up your declaration from
`matter number -00168. I want to direct your
`attention to Paragraph 3. Does this indicate
`that you reviewed the petitions for inter partes
`review that were filed in these matters, the
`declarations from Dr. Kahl and Murthy and the
`exhibits and articles cited in the petition and
`declarations?
` A Yes.
` Q Now, did you also review the various
`exhibits that are cited in your declarations?
` A I believe that I did, yes.
` Q Did you review any other materials
`that aren't cited or mentioned here?
`
`(202) 234-4433
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`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 15
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` A Not that I recall.
` Q Did you review any of the materials
`from the previous IPRs other than what's cited in
`here?
` A I looked at my deposition from the
`previous case.
` Q Did you look at the final written
`decision from the previous IPRs?
` A I looked at it but not for some time.
` Q When did you look at it?
` A I think when I met with counsel
`earlier this year.
` Q Did you refer to that decision when
`you were preparing your declaration?
` A I focused on the specific matters that
`I've talked about here. So I don't believe that
`I did.
` (Pause.)
` BY MR. SEGREST:
` Q Now, how did you select the materials
`that are cited in your declaration?
` A Should I go through every --
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`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 16
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` Q No, in general, did you do a search or
`investigation yourself? Were these materials
`provided to you by someone?
` A As far as I recall, I'm familiar with
`a lot of these materials. And I think that I
`would have maybe just checked to see if there's
`anything new in the field. So I don't recall
`specifically looking for extra material.
` Q Okay. Did you suggest other materials
`that are cited or were some of the materials
`suggested to you?
` MR. MAURER: Object to the form of the
`question.
` THE WITNESS: Well --
` MR. MAURER: As I understand the rules
`for these proceedings, communications with
`counsel for drafting the report are confidential.
`So I'm going to object on that ground.
` BY MR. SEGREST:
` Q Okay. So without revealing
`conversations with counsel, if you can answer my
`question which was whether you identified the
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`(202) 234-4433
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`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 17
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`materials or whether the materials were suggested
`to you. If you can answer that without telling
`me conversations with counsel.
` MR. MAURER: So I'm going to object.
`I'm going to instruct you not to refer to any
`communications with counsel. If you can answer
`that question without doing so, you may do so.
` THE WITNESS: Okay, yes. I believe I
`would have suggested references.
` BY MR. SEGREST:
` Q Okay. Still in this same declaration,
`I'm going to stick with this one unless we need
`to refer to the claim language. Is Paragraph 5 a
`reservation of rights?
` A I understand Paragraph 5 is written
`from a lawyer's perspective -- a legal
`perspective.
` Q Do you have any understanding of what
`right you might have to expand or otherwise
`modify opinions or conclusions independent of
`what's said here?
` A So I did review the paragraph, and I
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`(202) 234-4433
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`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 18
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`understood it to be that if other information had
`to be considered that it could be included after
`I had written this.
` Q Did you have some understanding about
`the mechanism for doing that, or is that
`something that you'd rely on attorneys for?
` A I think that as I read it and I had
`prepared reports in other cases and my
`understanding -- but once again, I'm not a lawyer
`-- is that it allows you to add to it if you feel
`that it should be added.
` Q So your understanding of this was in
`comparison to expert reports that you prepared in
`those other federal litigations, is that correct?
` A This is -- this is a case that is
`unusual for me because clearly it's not something
`that I have a lot of experience of. So as I
`explained, that's how I understood it to be, that
`it would allow me to add additional material
`should I receive advice from counsel that it was
`important to do that.
` Q Okay. And my next question, you may
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`(202) 234-4433
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`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 19
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`not have an understanding of this. My question
`really is, do you have any understanding of the
`difference between your direct testimony in a
`declaration, in an inter partes review
`proceeding, and an expert report that you
`prepared in federal district court litigation?
` A I don't understand all the
`differences. I think I would have to say that.
` Q Okay. Well, do you understand any of
`the differences? You said you don't understand
`all the differences.
` A I think that clearly the matter is
`perceived differently and a different examination
`of the materials I submit takes place. There
`isn't a court trial as such.
` Q Now, referring back to Paragraph 4 in
`this same declaration, the second sentence, does
`this indicate that you're aware of knowledge
`generally available to and relied upon by persons
`of ordinary skill in the art at the time of the
`invention?
` A That's what I have written there.
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`(202) 234-4433
`
`Neal R. Gross and Co., Inc.
`Washington DC
`www.nealrgross.com
`FlatWing Ex. 1044, p. 20
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` Q And referring to Paragraph 12, it is
`your testimony there that you consider yourself
`qualified to provide opinions on the
`understanding of a person of ordinary skill in
`the relevant art in 2005 as it pertains to
`parameters relating to transungual penetration
`and the identification of potential drug
`candidates for transungual penetration?
` A Yes.
` Q Anywhere in your testimony do you say
`what the level of ordinary skill in the art is?
` A My understanding was that there was a
`definition of what the POSA was. And I consider
`that I have the qualifications to comment on what
`that POSA would have known about transungual
`penetration and identification of drug candidates
`or transungual penetration.
` Q And what's your understanding of the
`definition of a POSA in this matter?
` A What I understand is that the
`definition that has been used is a person with a
`master's or PhD in chemistry, pharmacology,
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`pharmaceutical sciences and with at least two
`years of formulated pharmaceutical products.
` Q Okay. So in Paragraphs 4 and 12, is
`that what you're referring to as a POSA?
` A Yes.
` Q I want to direct you to Paragraph 6 in
`your declaration. It's under the heading,
`academic and professional qualification. Now
`among other things in your background, does this
`indicate that your PhD research included amount
`matters a focus on mathematical modeling of
`topical and transdermal drug delivery and
`prediction of percutaneous drug penetration?
` A Yes.
` Q Now, how would those mathematical
`models and predictions used?
` A For skin? For skin? How are the
`mathematical models used for skin? Is that the
`question?
` Q I'm sorry. I didn't understand what
`you were asking.
` A So I think your question was, how are
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`those mathematical models used? And I'm just
`asking you, are you specifically asking me about
`topical and transdermal drug delivery.
` Q Yes.
` A Okay. So in the 1990s, there was
`still a lot of developmental work in topical and
`transdermal delivery. And efforts were made to
`try and understand how we could gain a better
`insight into what drugs might be suitable for
`topical and transdermal drug delivery.
` Q What do you mean by developmental
`work?
` A The delivery of drugs to the skin is
`more challenging than other routes of drug
`delivery. And at the time, we didn't have a
`complete understanding of how we would identify
`candidates. So developmental work involves
`feasibility assessment of candidates and to see
`if they can be delivered. And then if you build
`up a knowledge of different properties, there
`were attempts to arrive at models which would
`attempt to tell you if you could get the
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`particular compound or other compounds into the
`skin or through the skin.
` Q So if you were able to identify a
`candidate compound through this method, what
`would be the next step in developing it?
` MR. MAURER: Objection. Scope.
` THE WITNESS: Well, I'm not sure that
`that's an easy question to answer because, as I
`said, the first thing you would have to do is a
`feasibility assessment and this is with skin that
`I'm referring to here. And the work I did was in
`conjunction with a pharmaceutical company. So
`there were other units in the company and there
`wasn't just me as an academic. So based on the
`data that I would generate, there would then be
`feedback from other units about what the next
`stages would be.
` BY MR. SEGREST:
` Q Could the next stages include
`preclinical and clinical trials?
` A In my case, it didn't include it but
`it would've involved -- formulation was my
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`expertise. So it would've involved evaluation or
`decisions about formulation choices to make.
` Q Were any of those formulations that
`you were involved in developed into products that
`were commercially marketed?
` A No.
` Q If a product were going to be
`commercially marketed, would it have to go
`through clinical trials first?
` MR. MAURER: Objection. Scope.
` THE WITNESS: I believe that it would.
` BY MR. SEGREST:
` Q Have you ever been involved in
`clinical trials?
` A Not in conducting clinical trials but
`in assessing clinical trial data.
` Q And what would you do in assessing
`clinical trial data?
` A It would depend on what particular
`data set I'm looking at.
` Q How often have you done that?
` A It depends on the particular project
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`FlatWing Ex. 1044, p. 25
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`I'm working on. I have a small consultancy
`company and there are a number of companies that
`would show me data. So it's hard to give you an
`exact number. But over the years, I have been
`involved in five or six projects that require
`assessment of data from clinical trials.
` Q Were any of those clinical trials
`dose-ranging studies?
` A I think that one ibuprofen study was.
` Q And as far as you know, were dose-
`ranging studies a common part of the clinical
`trials that are involved in drug approval?
` A That's a very general question and
`what I would say is, based on some of the
`projects that I'm involved in, there would be a
`discussion about what doses should be looked at.
` Q Would there then be testing of those
`doses or dosing regimens for safety and efficacy?
` MR. MAURER: Objection. Scope.
` THE WITNESS: Again, based on projects
`I've been involved in, safety and efficacy and
`dosing would all be areas that companies would
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`FlatWing Ex. 1044, p. 26
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`concern themselves with.
` BY MR. SEGREST:
` Q So referring to Paragraph 1, for the
`'938 patent, are you opining on only claims 3, 5,
`and 6?
` A I'd just need to check in the report,
`please.
` Q It's Paragraph 1.
` A Thank you. So in this report, I'm
`addressing claims 3, 5, and 6. And I understand
`that they are dependent on claim 1. And yes,
`that's correct.
` Q And just for the '938 patent, right?
` A As far as I see here, claim 1, 3, 5,
`and 6 of the '938 patent is what I'm discussing
`in this report.
` Q You mentioned that claim 1 -- the
`other claims depend from claim 1. But claim 1 is
`not separately recited in Paragraph 1, right?
` A Yes, it's not separately recited.
` Q So does this report contain opinions
`as to the validity of only claims 3, 5, and 6 as
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`they depend from claim 1 but not the validity of
`claim 1 itself?
` A Well, my understanding is that I'm
`talking about all the claims and the validity of
`all the claims.
` Q So you say all the claims. You mean
`--
` A Sorry.
` Q -- every claim of the '938 patent?
` A I'm sorry. I didn't word that
`carefully. I'm referring to Paragraph 16, 1, 3,
`5, and 6.
` Q Which paragraph are you referring to?
` A Paragraph 16.
` Let me direct you to Paragraph 67.
`And in Paragraph 67, you indicate that claims 3,
`5, and 6 of the '938 patent recite a
`pharmaceutical composition in the form of a
`solution comprising five percent w/w of
`tavaborole?
` A Yes.
` Q Turning back to Paragraph 17, does
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`claim 1 include that limitation about five
`percent of tavaborole?
` A Those words aren't in claim 1.
` Q Are those words in claims 3, 5, and 6?
` A The words are in claims 3 and 5. And
`I think in claim 6 which is referring back to the
`five percent preparation, it's explained that
`there are two components in the pharmaceutical
`composition in claim 3 and in claim 5.
` Q Okay. So the five percent language
`appears in claims 3 and 5, right?
` A It appears in claims 3 and 5, but I
`understand that it's also meant in claim 6.
` Q Okay. But it's not in claim 1, right?
` A As we read claim 1, we see that it
`talks about a method. But the specific words
`that we have looked at, five percent tavaborole,
`are not called out in claim 1.
` Q So in Paragraph 1 where it says that
`your declaration contains your opinions related
`to the validity of claims 3, 5, and 6. Is that
`because only claims 3, 5, and 6 include or
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`FlatWing Ex. 1044, p. 29
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`incorporate that five percent language?
` A In my report or in my declaration, I
`was asked to focus on five percent tavaborole.
`So it's important to refer to those claims.
` Q Let's look at your declaration on
`matter -00169 on the '289 matter for a moment.
`I'm directing you to Paragraph 1. Does this
`paragraph indicate that the declaration contains
`your opinions related to the validity of claims
`10, 12 through 15 -- I'm sorry, 10 and 12 through
`15 of the '289 patent?
` A As well as that paragraph, I would
`just like to refer to where I talk about the
`claims.
` Q That's Paragraph 16 you're saying?
` A Yes, thank you. So in looking at the
`claims, I noted that claim 10 also depends on
`claim 4. And then claim 4 is further discussed
`in the next paragraph as is claim 10. And then
`claims 13 to 15 also depend directly or
`indirectly on independent claim 12 and
`incorporate all limitations of the claims from
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`FlatWing Ex. 1044, p. 30
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`which they depend. And then I go on to discuss
`claim 13, claim 14, and claim 15.
` Q Okay. Would you like to take a short
`break to get a drink of water or something?
` A I -- I -- I don't mind. My voice is
`a little bit hoarse at the moment.
` Q Okay. We can take a break whenever
`you need to.
` MR. MAURER: Why don't we actually
`take a break.
` MR. SEGREST: Okay. That's fine.
` (Whereupon, the above-entitled matter
`went off the record at 11:05 a.m. and resumed at
`11:11 a.m.)
` BY MR. SEGREST:
` Q Okay. I believe when we left off, you
`were indicating -- so you were indicating that
`claims 10 and 12 through 15 all depend, directly
`or indirectly, from independent claim 1?
` A I thought that --
` Q I mean, sorry, independent claim 4.
`I misspoke.
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`FlatWing Ex. 1044, p. 31
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` A I'll just check these. So starting on
`Paragraph 16, that claim 10 depends from
`independent claim 4 and therefore incorporates
`all limitations of independent claim 4. And then
`on the next page, I go on to state what claim 4
`recites and then claim 10. And then I go on to
`claim 13 to 15. I do, in Paragraph 19, note that
`claims 13 to 15 depend directly or indirectly on
`independent claim 12. And then the next
`paragraph talks about claim 12. Paragraph 21
`discusses claim 13, and Paragraph 22 and 23
`discuss claim 14 and 15.
` Q Right. So I was incorrect. There are
`two independent claims here, right? There's
`independent claim 4 and independent claim 12,
`right?
` A That's what is stated in the
`declaration.
` Q And does independent claim 12 include
`a limitation of about five percent w/w of
`tavaborole?
` A Yes.
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`FlatWing