8/6/2020
`
`MYLAN PHARMACEUTICALS, INC., )
` Petitioner, ) IPR 2020-00040
` )
` v. ) U.S. Patent No.
` ) 7,326,708
`MERCK SHARP & DOHME CORP, )
` Patent Owner. )
`______________________________)
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 1
`Page 3
` REMOTE APPEARANCES (CONTINUED):
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` FOR MYLAN:
` KATTEN MUCHIN ROSENMAN LLP
` JITENDRA MALIK, PH.D., ESQUIRE
` 550 South Tryon Street, Suite 2900
` Charlotte, North Carolina 28202
` 704-344-3185
` jitty.malik@katten.com
`-AND-
` MYLAN, INC.
` PRESTON IMPERATORE, IN-HOUSE COUNSEL
` 1000 Mylan Boulevard
` Canonsburg, Pennsylvania 15317
` preston.imperatore@mylan.com
`-AND-
` WINSTON & STRAWN, LLP
` ZACHARY B. COHEN, ESQUIRE
` 1901 L Street, Northwest
` Washington, D.C. 20036
` 202-282-5757
` zcohen@winston.com
`
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` DEPOSITION OF MUKUND CHORGHADE, PH.D.
` APPEARING REMOTELY
`
` August 6, 2020
` 9:32 a.m.
`
`Reported by: Lori J. Goodin, RPR, CLR, CRR,
` RSA, California CSR #13959
`____________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`Page 4
` REMOTE APPEARANCES (CONTINUED):
`
` FOR TEVA/WATSON:
` GOODWIN PROCTER LLP
` EMILY L. RAPALINO, ESQUIRE
` 100 Northern Avenue
` Boston, Massachusetts 02210
` 617-570-1938
` erapalino@goodwinlaw.com
`
` FOR DR. REDDY'S:
` LERNER DAVID LITTENBERG
`
` KRUMHOLZ & MENTLIK
` TEDD W. VAN BUSKIRK, ESQUIRE
` 20 Commerce Drive
` Cranford, New Jersey 07016
` 908-518-6341
` tvanbuskirk@lernerdavid.com
`
`ALSO PRESENT:
` Daniel Holmstock, Videographer and
` Document Technician
`
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`Page 2
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` REMOTE APPEARANCES:
` FOR MERCK:
` WILLIAMS & CONNOLLY LLP
` STANLEY E. FISHER, ESQUIRE
` SHAUN P. MAHAFFY, ESQUIRE
` ALEXANDER S. ZOLAN, ESQUIRE
` ANTHONY SHEH, ESQUIRE
` 725 Twelfth Street, Northwest
` Washington, D.C. 20005
` 202-434-5000
` sfisher@wc.com
` smahaffy@wc.com
` azolan@wc.com
` asheh@wc.com
`-AND-
` U.S. MERCK CORPORATE HEADQUARTERS
` GERARD DEVLIN, IN-HOUSE COUNSEL
` 2000 Galloping Hill Road
` Kenilworth, New Jersey 07033
` gdevlin@merck.com
`
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`1 (Pages 1 to 4)
`202-232-6046
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 5
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` INDEX TO EXAMINATION
`
`WITNESS: MUKUND CHORGHADE, PH.D.
`
`EXAMINATION BY PAGE
`MR. FISHER 8
`DR. MALIK 291
`MR. FISHER 312
` * * *
`
` INDEX TO EXHIBITS
` MUKUND CHORGHADE, PH.D.
` Mylan v. Merck
` Tuesday, August 6, 2020
` Lori J. Goodin, RPR, CLR, CRR,
` RSA, California CSR #13959
`
`MARKED DESCRIPTION PAGE
`Exhibit 1001 U.S. patent 7,326,708 178
`Exhibit 1002 Dr. Chorghade's declaration 12
`Exhibit 1003 Dr. Chorghade's CV 25
`Exhibit 1004 WO 03/004498 A1 55
`
`Page 6
`
` INDEX TO EXHIBITS
` MUKUND CHORGHADE, PH.D.
` Mylan v. Merck
` Tuesday, August 6, 2020
` Lori J. Goodin, RPR, CLR, CRR,
` RSA, California CSR #13959
`
`MARKED DESCRIPTION PAGE
`Exhibit 1005 Brittain reference 201
`Exhibit 1006 Bastin, et al. reference 190
`Exhibit 1007 U.S. patent 6,999,871 292
`Exhibit 2032 U.S. patent 8,309,724 96
`Exhibit 2042 Chapter 6 of The Handbook
` of Pharmaceutical Salts 106
`Exhibit 2043 U.S. patent 8,329,696 129
`Exhibit 2044 WO 2012-166420 A1 170
`Exhibit 2045 Drug Discovery and Development
` Volume II 220
`Exhibit 2046 Crystalline Solids 233
`Exhibit 2047 2003 article in Crystal Growth
` & Design, Vol. 3, Number 6 243
`Exhibit 2048 U.S. patent 7,056,942 252
`Exhibit 2049 Bernstein article 262
`Exhibit 2050 Controlling the Polymorphic
` Form Obtained, Chapter 3 271
`
` (Exhibits provided electronically
` to the court reporter.)
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
` Thursday, August 6, 2020, 9:32 a.m.
` PROCEEDINGS
`
` THE VIDEOGRAPHER: We are now on the
` record. This is Video Number 1 in the video
` recorded deposition of Dr. Mukund Chorghade,
` taken in the matter of Mylan Pharmaceuticals,
` Inc., Petitioner, v. Merck Sharp & Dohme
` Corp., Patent Owner.
` Pending before the United States
` Patent and Trademark Office before the Patent
` and Trial Appeal Board, IPR 2020-00040 for
` patent Number 7,326,708.
` This deposition is being held by
` Zoom video remote conferencing and the
` physical recording is taking place in
` Culpeper, Virginia.
` Today's date is August 6, 2020, and
` the time on the video screen is 9:32 a.m.
` My name is Daniel Holmstock. I am
` the legal videographer, from Digital Evidence
` Group. The court reporter today is Lori
`
`Page 8
` Goodin, also in association with Digital
` Evidence Group.
` All parties to this deposition are
` appearing remotely and have agreed to the
` witness being sworn in remotely. And due to
` the nature of remote reporting, please pause
` briefly before speaking to ensure all parties
` are heard completely.
` Counsel your appearances will be
` noted on the stenographic record.
` At this point now, our court
` reporter will now administer the oath.
` * * *
`Whereupon,
` MUKUND CHORGHADE, PH.D.,
`a witness called for examination, having been
`first duly sworn, was examined and testified as
`follows:
` * * *
` EXAMINATION
`BY MR. FISHER:
` Q. Good morning, Dr. Chorghade. Did I
`2 (Pages 5 to 8)
`202-232-6046
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 9
`Page 11
`you see your declaration and your CV and some of
`the other exhibits that you have submitted.
` There should be about 16 tabs.
` A. Yes. So, there is a United States
`patent '708. There is my declaration. There is
`a patent '498. There are some research papers.
` Q. Okay. You don't -- so, what I have
`done and I will represent to you and hopefully
`the copying job made it there -- I haven't had
`the opportunity to flip through that binder
`myself given the COVID issues.
` A. There are 16 tabs over here, yes.
` Q. Right. And so, you can keep that
`out in front of you. We may be discussing some
`of the exhibits in that binder today.
` I will tell you that what remains in
`the box are a number of documents that we may or
`may not discuss today.
` And, what I have done is numbered
`the documents in the box. They should be in
`Redwelds, something like 1 to 30, or 1 to 32.
` If we happen to discuss one of those
`
`pronounce that correctly?
` A. Yes, you did. Thank you.
` Q. Okay, good morning.
` Could you state your full name and
`address for the record, sir.
` A. Full name, Mukund Shanker Chorghade.
`Address, 7 Jones Court, Hillsboro, New Jersey
`08844.
` Q. Is there any reason that you cannot
`testify truthfully and accurately today?
` A. There is no reason.
` Q. Okay. Before today's deposition, I
`corresponded with Merck -- Mylan's counsel,
`Mr. -- or Dr. Malik, about shipping a box of
`materials related to the deposition to you.
` Do you have that box in your office?
` A. Yes, I do.
` Q. Okay. My understanding is that it
`is not yet opened or has it been opened?
` A. That is correct, yes.
` Q. It has not yet been opened?
` A. It has not been opened.
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` Q. Okay.
` A. No.
` Q. If you have something to open it
`with, would you go ahead and open the box?
` DR. MALIK: Stan, may I do so, too?
` MR. FISHER: Absolutely.
`BY MR. FISHER:
` Q. And so when you have it open, you
`can take the binder that is in the box out but
`leave the other tabbed folders in there.
` A. Are you requesting that I pull out
`this black binder?
` Q. Yes, sir.
` A. I have just done that.
` Q. Excellent. So, what I have tried to
`do and hopefully the shipping has worked out, is
`put in a binder your declaration, in other words
`your testimony that you have already submitted in
`the matter, along with the exhibits that you
`attached to your declaration.
` So, that should be in the binder.
`And you want to just flip through it and see if
`
`Page 12
`documents, I will ask you at that time to pull
`out, you know, Redweld Number 3 or whatever it
`may be, and we can discuss the document at that
`point.
` We will also have the documents up
`on the screen. I do know -- I'm, I'm old school.
`I like to see the documents in paper. They will
`be on the screen for you. It will be up to you
`what you use. Okay?
` A. Thank you. So, bear with me for
`five seconds while I pull up a chair to rest this
`on by my side.
` MR. FISHER: I had to do the same
` thing myself. No problem.
` THE WITNESS: So, I have just pulled
` up a chair to rest this binder and I can pull
` out anything I want.
` (Exhibit Number 1002
` marked for identification.)
`BY MR. FISHER:
` Q. Okay. So, your declaration is
`entered as Exhibit 1002. That should be in the
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`3 (Pages 9 to 12)
`202-232-6046
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
`
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 13
`Page 15
` A. At that point I was a supervisor.
` Q. Okay. And what is a salt screen?
` A. A salt screen is basically something
`that is done when you screen a particular salt
`and make -- screen a particular amino acid, and
`test it against various salts.
` And particular aspect of the testing
`is whether these materials are going to be
`crystalline, or whether they are going to be
`easily hygroscopic or not.
` So, you determine the most optimum
`favorable salt for your applications.
` Q. So, in the first instance, you are
`checking to see whether, if it is a basic drug,
`the acid counterion forms a salt, right?
` A. This is correct.
` Q. And then if it forms a salt, you are
`evaluating the properties of the salt. Right?
` A. This is correct.
` Q. And so you indicated that you
`performed many salt screens.
` How frequently prior to 2014, the
`
`binder you pulled out.
` A. Yes, it is here.
` Q. Okay, all right. So, that is there
`for your reference to the extent you need it.
` Sir, you provide background on
`yourself in your declaration, right?
` A. Correct.
` Q. You are an expert in medicinal
`chemistry; is that right?
` A. Yes, I am.
` Q. What is medicinal chemistry?
` A. Medicinal chemistry is basically the
`science of discovering new drugs through studying
`their structure activity relationships.
` And then developing the drug.
` Q. And, structure activity
`relationships, is that SAR?
` A. Correct.
` Q. Okay. You provide in your
`declaration a fairly extensive background on
`various medicinal chemistry related issues,
`right?
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`
` A. Yes, I do.
` Q. Now, I didn't see in the background
`section on your experience a reference to salt
`formation in your background.
` Did I miss that?
` A. That is not expertise that is
`typically communicated. That comes under the
`whole development experience scenario.
` Q. Okay. So, you don't specifically
`reference in your declaration salt formation, is
`that right, as part of your background?
` A. This is correct.
` Q. Have you ever performed a salt
`screen?
` A. Many times.
` Q. Okay. When was the last time you
`performed a salt screen?
` A. The last time would have been around
`2014 or 2015.
` Q. And was it you personally doing the
`salt screen, or were you supervising others in
`2014?
`
`Page 16
`last time that you have done it, were you
`performing salt screens?
` A. There were always at least one per
`drug that we worked on all through my career.
` Q. Uh-huh. And so, would you be the
`one performing the salt screens if you were
`involved in the project in developing a drug?
` Or would it be somebody else that
`you worked with?
` A. In the early part of my career, it
`would have been me. In the later part when I
`rose through the ranks in the company I was more
`directional. I was more of a director than
`handling it myself.
` Q. Okay. When you or your colleagues
`were performing the salt screens that you had
`personal involvement in, what did you do if a
`particular drug didn't form a salt with a
`counterion?
` A. Our basic job was to explore through
`the screens the most optimal counterion.
` And, there have been -- there is
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`4 (Pages 13 to 16)
`202-232-6046
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 17
`Page 19
`knowledge of several bases which can form a
`counterion with an acid. And several acids which
`form a counterion with the base.
` Q. Okay. So, if you were running a
`screen and the drug in question didn't form a
`salt with a counterion, would you move on to the
`next counterion that -- to form a salt? Is that
`the way it progressed?
` DR. MALIK: Objection, foundation.
` THE WITNESS: The way we progressed
` is to look at the salt formation and see what
` the nature of that salt is. And then move on
` if necessary.
`BY MR. FISHER:
` Q. Okay. Now when you perform salt
`screens, and I'm talking about you, being you,
`your team on the various projects you worked on,
`how many counterions did you typically evaluate
`with a particular drug in question? Was it two,
`three, a dozen?
` Just give me some sense of how big
`the screens were.
`
` Q. I see.
` A. But, not at the same time.
` Q. I see, okay.
` So, if the drug was a basic drug,
`you would look at the inorganic acids as the
`potential counterion?
` A. This is correct.
` Q. And did you have situations in your
`experience where you screened the eight to ten
`inorganic acids and you didn't get salt formation
`or one or more of the acids?
` A. The typical five inorganic acids
`would always give a salt formation.
` And, we have never encountered a
`case where there was no salt formation.
` Q. Okay. And what were the --
` Do you remember offhand what the
`five inorganic acids that you would typically
`screen were?
` A. Yes, I do. It was hydrochloric
`acid, sulfuric acid. Phosphoric acid was a
`obvious one. At times it was nitric acid. And
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` A. In the early part of my career, we
`used to typically screen five inorganic acids.
`We would screen typically about eight to 10
`inorganic bases.
` And that was always our first, first
`shot at the problem.
` Q. And, so just to make sure I have
`that right, roughly five inorganic acids, and
`eight to ten inorganic bases, on the one hand,
`against whatever drug in question you were
`looking to develop, on the other?
` A. Yes, based on the structure.
` Q. And, why would you screen both
`inorganic acids and inorganic bases at the same
`time?
` A. It was not at the same time.
` You would typically look at the
`structure. If it is an organic amine, you would
`look at the inorganic acids for forming a
`counterion.
` If it was an organic acid, then you
`would look at the inorganic bases.
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`Page 20
`then finally we always used to use something
`typically like benzene sulfonic acid.
` Q. Okay. Do you consider yourself an
`expert in salt selection?
` A. It is part of my general expertise
`as in drug discovery and development, yes.
` Q. So, that is a yes, you do consider
`yourself an expert in salt selection?
` A. Yes, I do.
` Q. Now, when I reviewed the background
`in your declaration, I noticed that you don't
`reference polymorph characterization as part of
`your background.
` Did I miss that?
` A. I have not referenced polymorph
`formation.
` Q. Do you consider yourself an expert
`in polymorph characterization?
` A. Yes.
` Q. Have you run polymorph screens
`previously?
` A. Again, when I was a director, people
`5 (Pages 17 to 20)
`202-232-6046
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
`
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 21
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` A. Yes, I do. I do recall that. And I
`have that expertise.
` Q. And what, if any, relevance does
`that have to your opinions in this case?
` A. I made a general statement of
`various areas in which I am an expert.
` Q. Uh-huh.
` A. If you look at the structure of
`every molecule you presented, all of that has
`fluorines in it.
` Q. Okay. Okay. I noted that you
`have --
` It seemed like you had read about
`sitagliptin in the past; is that correct?
` A. That's correct, I have.
` Q. Have you ever worked with the
`molecule itself?
` A. Yes, I have.
` Q. And when was that?
` A. It was extensively during the period
`of 2008 to about 2016.
` Q. You worked extensively with
`
`in my group ran it, yes.
` Q. And did you --
` Were you involved in supervising
`those people who were performing polymorph
`screens?
` A. Yes, all of those people did report
`to me.
` Q. Have you ever yourself performed a
`polymorph screen?
` A. No.
` Q. So, unlike the salt screens, which
`you have done personally, you have never
`performed a polymorph screen yourself?
` A. Yes, correct.
` Q. Do you consider yourself an expert
`on polymorph characterization?
` DR. MALIK: Objection.
` THE WITNESS: Yes. Yes, I do.
`BY MR. FISHER:
` Q. Are you an expert in x-ray
`crystallography?
` A. No. I know how to interpret the
`
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`Page 22
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`data.
` Q. You know how to interpret the data
`but you are not an expert in x-ray crystallography?
` A. No.
` Q. Are you an expert in raman
`spectroscopy?
` A. Again, no.
` Q. Are you an expert in single crystal
`modeling?
` A. No.
` Q. So, in reading your background on
`medicinal chemistry, you mentioned previously in
`your testimony that SAR is part of that
`background, right?
` A. Correct.
` Q. Are you using SAR at all in relation
`to your opinions in this case?
` A. No.
` Q. I noted in Paragraph 9 of your
`declaration that you reference having experience
`incorporating halogens such as fluorine in the
`past. Do you recall that?
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`Page 24
`sitagliptin during the period of 2008 to 2016?
` A. Yes, it was part of a matrix of
`compounds that I did work on.
` Q. And what were you doing with.
` Sitagliptin between 2008 and 2016?
` A. In non-confidential terms, because
`this work was done for another company and the
`data is still classified, we were trying to
`determine the drug metabolism by interactions
`between two or more diabetes compounds.
` Q. So, so you were doing drug-drug
`interaction work with sitagliptin relative to two
`other diabetes compounds?
` A. In combination, yes.
` Q. Did you do a salt screen with
`sitagliptin during that period?
` A. No.
` Q. Did you do a polymorph screen with
`sitagliptin during that period?
` A. No.
` Q. Have you ever done a salt screen
`with sitagliptin?
`6 (Pages 21 to 24)
`202-232-6046
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 25
`Page 27
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` A. No.
` Q. Have you ever done a polymorph
`screen with sitagliptin?
` A. No.
` (Exhibit Number 1003
` marked for identification.)
`BY MR. FISHER:
` Q. Now, I would like you to turn to
`Exhibit 1003, which I understand to be your
`resumé or CV.
` A. Okay.
` Q. And is this an up-to-date CV as of
`the time that your declaration was submitted,
`sir?
` A. It is, yes.
` Q. When I was reviewing your
`publications -- and I will turn your attention to
`Page 6. Let me know when you are there.
` A. Page 6, you say?
` Q. Yes.
` A. Okay.
` Q. My understanding is that you were
`
`Page 26
`
`listing your publications in roughly
`chronological order; is that right?
` A. That is correct.
` Q. And so I noticed on Page 6 that
`there are several references, for example,
`Reference 61, that indicates that the publication
`is in press.
` A. Yes.
` Q. And, there are other instances of
`this in your list.
` A. Correct.
` Q. Are those in press or have they
`issued at some point in time?
` A. Well, in press means they have been
`issued and they have been circulated a lot by
`websites and traditional matters.
` This one publication, 61, is in Pure
`and Applied Chemistry. That is all now
`circulated online. It is a glossary of terms and
`has been accepted.
` Q. Okay. And so -- 62, same thing. It
`says in press.
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`www.DigitalEvidenceGroup.com
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`Digital Evidence Group C'rt 2020
`
` A. That is correct.
` Q. And so, those have all been
`published; is that right?
` A. Correct, yes.
` Q. And I noticed that 51, for example,
`has in bold, "Now to be resubmitted."
` Do you see that?
` A. This is correct. We expected that
`to happen and we got a notification that somehow
`there are a couple of small additional
`corrections still to be made.
` Q. And is that paper a published paper
`at this point or do you know?
` A. At this point, even today, no.
` Q. Okay. Are there particular
`publications on your CV that you believe are
`particularly relevant to your opinions in this
`case?
` A. No particular publications. But, in
`all of the work it has always involved developing
`chemistry, discovering drugs, from which all of
`the basic concepts are still valuable.
`
`Page 28
` Q. Okay. But, in terms of a paper on
`salt formation, there is nothing on your CV that
`you can point to that talks about salt formation
`that you have written. Right?
` A. That is correct. I have not written
`any paper on salt formation.
` Q. And in terms of polymorph
`identification, there is no paper on your CV that
`is a discussion of principles of polymorph
`identification. Right?
` A. No. There isn't.
` Q. I saw on Page 9 of your CV that you
`edited some books.
` A. Yes, I did.
` Q. And one of them I think is Drug
`Discovery and Development, Volumes 1 and 2.
` A. This is correct, yes. I was the
`editor of that.
` Q. What did it mean to be an editor of
`that two-volume set?
` A. It meant that it -- in the two
`books, there was a total of about 32 chapters. I
`7 (Pages 25 to 28)
`202-232-6046
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
`
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 29
`Page 31
` A. I remember the Indian side. That
`was a lab. But, I don't remember the U.S. side
`that was actually involved in that.
` Q. Who was on the Indian side?
` A. It was a laboratory called Cipla,
`and it was another lab called Avra Labs.
` Q. And was it an Indian proceeding or a
`U.S. proceeding?
` A. U.S. proceeding, because the U.S.
`company was doing the litigation.
` Q. Okay. And was it a case that
`involved patent infringement and validity
`opinions; is that right?
` A. Yes.
` Q. Do you remember the particular drug?
` A. Yes, I do. It was Roflumilast.
` Q. I'm sorry, say that one more time?
` A. Roflumilast.
` Q. Did you provide a deposition in that
`case?
` A. It was called an expert opinion at
`the time. Not a deposition.
`
`personally wrote two.
` So I was both an author and then I
`assembled and got together a whole team of people
`to write different chapters focused on very
`different topics.
` Q. And did you have any involvement in
`editing the chapters that you didn't author?
` A. Well, yes, I was the principal
`editor of these books. They would submit a
`chapter and then I would have to edit it for
`appropriateness and all of that.
` Q. So it was a back and forth with the
`author. You would edit, provide comments and
`ultimately for the chapters that you did not
`yourself author, you provided input?
` A. This is correct.
` Q. Okay. Now, I noticed on Page 14 of
`your CV, that some of the references listed, for
`example, 88 and 89 on Page 14, are designated in
`a different font.
` I take it there is nothing relevant
`about that. That is just whatever font it was
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`when you inputted that in your CV?
` A. This is correct, yes. There is
`nothing special or unique. They represent
`lectures that I gave as part of the International
`Union of Pure and Applied Chemistry. I just --
` Q. I just wanted to make sure I wasn't
`missing the significance of the font difference.
` A. There really isn't any.
` Q. Okay. I didn't notice anything in
`your declaration or your CV about prior expert
`witness work.
` Have you ever testified as an expert
`witness previously?
` A. Once before, about six years ago.
`But not in the last four years.
` Q. Okay. The one time about six years
`ago, what was the nature of the case that you
`testified in?
` A. A patent infringement on a drug and
`particularly the process that was used.
` Q. Do you remember the parties involved
`in that case?
`
`Page 32
`
` Q. You wrote an expert report?
` A. Yes.
` Q. Okay. But you never had your
`deposition taken?
` A. No.
` Q. You never testified in a courtroom?
` A. I have never testified in a
`courtroom.
` Q. Other than that one instance, six
`years ago, have you ever been a -- an expert
`witness previously?
` A. No.
` Q. Have you ever had any of your own
`patents been involved in a patent infringement
`suit?
` A. No.
` Q. You have never been a witness as an
`inventor on your own patents in a patent
`infringement suit?
` A. No.
` Q. I want to talk in general terms
`about how you prepared for your deposition today.
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`8 (Pages 29 to 32)
`202-232-6046
`
`Merck Exhibit 2051
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`

`

`8/6/2020
`
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp. Mukund Chorghade, Ph.D.
`Page 33
`Page 35
` Q. Okay. Anyone else that you recall?
` A. No.
` Q. All right. Turning back to your
`declaration. I am at Paragraph 6. This is
`Exhibit 1002.
` A. Paragraph 6, you say?
` Q. Yes.
` A. Okay. Okay.
` Q. And it notes that you have been told
`to assume that the priority date is
`June 24th, 2003, the date of the provisional
`filing. Is that right?
` A. That is my understanding, yes.
` Q. And as of today in this declaration,
`you haven't offered any opinions assuming an
`earlier priority date. Is that right?
` A. That is correct, I have not offered
`any opinions on it.
` Q. Okay. Moving on to Paragraphs 17 --
`I'm sorry, Page 17 and 18. Not Paragraph 17.
` Page 17 and 18 of your declaration.
` A. Okay.
`
` Again, in general terms.
` Did you meet remotely with counsel
`for Mylan?
` A. I met and had phone conversations
`with Dr. Jitty Malik.
` Q. Okay. And roughly when did you have
`phone conversations with Dr. Malik?
` A. I was hired in August of 2019. And
`then between then and the time of when we wrote
`up this 56-page report, we had a couple of phone
`conversations.
` Q. Okay. And in terms of preparing for
`your cross-examination here today, did you talk
`with Dr. Malik in the last week or so?
` A. Yes, I did.
` Q. And --
` A. That was -- yes.
` Q. And when was that?
` A. That would have been this -- on the
`4th.
` Q. Okay. And how long did those
`conversations last?
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` A. Between two to three hours.
` Q. And how many of those conversations
`did you have in the last week or so?
` A. It was this week and I would say
`there were one major conversation.
` And yesterday we also intera