Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 1
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ________________________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ________________________________________
`
` MYLAN PHARMACEUTICALS INC., et al.,
`
` Petitioner,
`
` v.
`
` MERCK SHARP & DOHME CORP.,
`
` Patent Owner.
`
` __________________________________________
`
` Case IPR2020-00040
` Patent No. 7,326,708 B2
`
` __________________________________________
`
` DEPOSITION OF ALLAN S. MYERSON, Ph.D.
`
` APPEARING REMOTELY
`
` November 3, 2020
`
` 9:01 a.m.
`
`Reported by
`
`Rebecca J. Callow, RMR, CRR, RPR, CSR
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 001
`
`
`
`Page 1
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ________________________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ________________________________________
`
` MYLAN PHARMACEUTICALS INC., et al.,
`
` Petitioner,
`
` v.
`
` MERCK SHARP & DOHME CORP.,
`
` Patent Owner.
`
` __________________________________________
`
` Case IPR2020-00040
` Patent No. 7,326,708 B2
`
` __________________________________________
`
` DEPOSITION OF ALLAN S. MYERSON, Ph.D.
`
` APPEARING REMOTELY
`
` November 3, 2020
`
` 9:01 a.m.
`
`Reported by
`
`Rebecca J. Callow, RMR, CRR, RPR, CSR
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 001
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 2
`
` REMOTE ORAL DEPOSITION OF
`
`ALLAN S. MYERSON, Ph.D., produced as a witness at
`
`the instance of the Petitioner and duly sworn, was
`
`taken in the above-styled and numbered cause on the
`
`3rd day of November 2020, from 9:03 a.m. EDT, to
`
`11:34 a.m., before Rebecca J. Callow, Registered
`
`Merit Reporter, Certified Realtime Reporter,
`
`Registered Professional Reporter and Notary Public
`
`for the State of Texas, reported by computerized
`
`stenotype machine remotely from Austin, Texas,
`
`pursuant to the Federal Rules of Civil Procedure.
`
`1 2 3 4 5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 002
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 3
`
` REMOTE APPEARANCES
`
`ON BEHALF OF MYLAN PHARMACEUTICALS, INC.:
`
` Katten Muchin Rosenman LLP
`
` 550 South Tryon Street
`
` Suite 2900
`
` Charlotte, North Carolina 28202
`
` 704-344-3185
`
` By: Jitendra Malik, Ph.D.
`
` jitty.malik@katten.com
`
`ON BEHALF OF TEVA PHARMACEUTICALS USA AND
`
`WATSON LABORATORIES, INC.:
`
` Goodwin Procter LLC
`
` 100 Northern Avenue
`
` Boston, Massachusetts 02210
`
` 617-570-1000
`
` By: Emily L. Rapalino
`
` erapalino@goodwinlaw.com
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 003
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 4
`
` REMOTE APPEARANCES (CONTINUED)
`
`ON BEHALF OF MERCK:
`
` Williams & Connolly LLP
`
` 725 Twelfth Street, Northwest
`
` Washington, D.C. 20005
`
` 202-434-5000
`
` By: Alexander S. Zolan
`
` azolan@wc.com
`
` Stanley Fisher
`
` sfisher@wc.com
`
` Shaun Mahaffy
`
` smahaffy@wc.com
`
` Bruce Genderson
`
` bgenderson@wc.com
`
` Sarahi Uribe
`
` suribe@wc.com
`
` David Krinsky
`
` dkrinsky@wc.com
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 004
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 5
`
` REMOTE APPEARANCES (CONTINUED)
`
` MERCK & CO., INC.:
`
` 2000 Galloping Hill Road
`
` Kenilworth, New Jersey 07033
`
` (908) 740-4000
`
` By: Raynard Yuro
`
` ryuro@merck.com
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 005
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 6
`
` I N D E X
`
` PAGE
`
`ALLAN S. MYERSON, PH.D.
`
`Examination by Mr. Malik ..........................8
`
`Examination by Mr. Zolan ........................101
`
`Court Reporter's Certificate ....................104
`
`Signature Page .................................107
`
`Changes and corrections ........................109
`
` * * * * *
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 006
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 7
`
` E X H I B I T S
`
`NO. DESCRIPTION PAGE
`
` (None offered)
`
` * * * * *
`
`1
`
`2 3
`
`4
`
`5 6 7
`
`8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 007
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Tuesday, November 3, 2020, 9:03 a.m.
`
` P R O C E E D I N G S
`
` - - - - -
`
` ALLAN S. MYERSON, PH.D.,
`
` called as a witness herein, having
`
` been first duly sworn by a Notary Public,
`
` was examined and testified as follows:
`
` EXAMINATION
`
` BY MR. MALIK:
`
` Q. Good morning, Dr. Myerson.
`
` A. Good morning.
`
` Q. For the record, would you mind stating your
`
`name one more time.
`
` A. Yes. Allan, A-l-l-a-n, Stuart Myerson,
`
`M-y-e-r-s-o-n.
`
` Q. And you understand today that you are under
`
`oath?
`
` A. Yes.
`
` Q. And you understand that the testimony you
`
`give today is under penalty of perjury?
`
` A. Yes.
`
` Q. And you also understand that you are
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 008
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`obligated to answer my questions today?
`
` A. Yes.
`
` Q. Is there any reason you cannot tell the
`
`truth today?
`
` A. No.
`
` Q. Now, today I'm going to ask a series of
`
`questions. If anything is unclear, let me know and
`
`I'll try to rephrase it. Fair enough?
`
` A. Yes.
`
` Q. But if I ask a question and you answer the
`
`question, I will assume you understood it. Okay?
`
` A. Yes.
`
` Q. Let me go ahead and introduce into the chat
`
`room your declaration, the '408 patent, the '871 and
`
`the '708 patents, just so you have those documents.
`
` A. Yes. I have a hard copy of my declaration,
`
`materials considered, the '708 patent, and the
`
`'498 --
`
` Q. Okay.
`
` A. -- PCT. That's what I basically have in
`
`front of me.
`
` Q. Okay. Let me put them in the chat room,
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 009
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`mostly so everyone else has them, just in case.
`
` Okay. So I've loaded into the chat
`
`room, the -- your declaration, which we'll get to in
`
`a minute; the '708 patent, Exhibit 1001; the '498
`
`patent, 1004; and the '871 patent, 1007. Let's go
`
`ahead and start.
`
` Now, you said you have hard copies of
`
`these four documents in front of you?
`
` A. Yes.
`
` Q. Any other documents?
`
` A. No.
`
` Q. Are the four documents that you have in
`
`front of you marked in any way?
`
` A. No.
`
` Q. Good. Now, I have uploaded into the chat
`
`room what has been labeled as Merck Exhibit 2101.
`
`You can look at it electronically or you can use the
`
`hard copy you have.
`
` Will you, please, confirm for me that
`
`you signed the document on August 21st, 2020, and it
`
`bears your signature on page 124.
`
` A. Yes. That's my signature, and the date is
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 010
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`August 21st, 2020.
`
` Q. Okay. And I'm going to refer to
`
`Exhibit 2101 as your declaration, or the Myerson
`
`declaration, just for ease today.
`
` Would you understand that if I refer to
`
`it as your declaration, or the Myerson declaration,
`
`you'll know what I'm talking about as Exhibit 2101?
`
` A. Yes.
`
` Q. Any corrections to Exhibit 2101?
`
` A. Not that I'm aware of.
`
` Q. And you stand by the opinions in your
`
`declaration?
`
` A. I do.
`
` Q. And just to get some routine foundation
`
`questions out of the way; you've probably heard me
`
`ask them to you in the past.
`
` Now, you understand that this
`
`declaration was meant to be a complete statement for
`
`the issues you're offering testimony to in connection
`
`with this IPR.
`
` A. Yes.
`
` Q. Sitting here today, as of right now, this
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 011
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`declaration represents your complete opinions to any
`
`issues in this case as of the time you signed the
`
`declaration?
`
` A. Yes.
`
` Q. Have you -- in signing the declaration,
`
`have you been made aware of any information that is
`
`not encompassed within Exhibit 2101?
`
` For example, have you read anybody's
`
`deposition transcript?
`
` A. I'm sorry. Could you repeat that one
`
`again?
`
` Q. Sure. Let me strike that.
`
` After signing your declaration, have
`
`you read anyone else's deposition transcript?
`
` A. No.
`
` Q. Have you seen anyone else's declaration
`
`that is not mentioned in 2101?
`
` A. Yes.
`
` Q. Whose declaration have you seen?
`
` A. I recently, I think over this past weekend,
`
`read the Matzger declaration.
`
` Q. Okay. So -- and was that the first time
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 012
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`that you reviewed the Matzger declaration?
`
` A. Yes.
`
` Q. Okay. So at the time of signing your
`
`declaration, 2101, you hadn't received the Matzger
`
`declaration. Is that correct?
`
` A. Correct.
`
` Q. And just so I'm clear, in connection with
`
`your review of the Matzger declaration, you're not
`
`here to, I guess, refute anything that Dr. Matzger
`
`said in his declaration. Correct?
`
` A. That's correct.
`
` Q. Your opinions are limited to what is in
`
`your declaration, Exhibit 2101. Correct?
`
` A. Correct.
`
` Q. And you don't intend to supplement your
`
`opinions in any way with what Dr. Matzger said in
`
`his declaration. Correct?
`
` A. Correct.
`
` Q. Fair enough.
`
` Did you request to see the Matzger
`
`declaration or was it just given to you?
`
` A. You know, I don't remember if I asked for
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 013
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`it or it was just given to me.
`
` Q. Okay.
`
` A. I ended up with it. I don't recall.
`
` Q. Okay. Do you have any understanding as to
`
`why the document was given to you?
`
` A. Just so I could read it. I mean, I think
`
`that was the only reason.
`
` Q. Okay. Let's go back to your declaration.
`
` In connection with the opinions that
`
`you express in your declaration, are you satisfied
`
`with the thoroughness of your review and
`
`investigation?
`
` A. Yes.
`
` Q. And so any distinctions or any points that
`
`you want to make are encompassed within Merck
`
`Exhibit 2101, which is your declaration. Correct?
`
` A. Yes.
`
` Q. And in connection with your declaration,
`
`you were given a full opportunity to respond to any
`
`points, and you did so. Correct?
`
` A. Yes.
`
` Q. So if it's not expressed in 2101, your
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 014
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`declaration, you are not advancing that opinion for
`
`the purposes of this matter. Correct?
`
` A. Correct.
`
` Q. Now, you mentioned the Matzger declaration.
`
` Anything else that you were aware of
`
`that is not encompassed within Merck Exhibit 2101?
`
` Any other declaration? Any other
`
`transcript? Any other evidence?
`
` A. Not related to the IPR.
`
` Q. Now, when you say, "Not related to the
`
`IPR," again, without getting into privileged
`
`information, can you give me a general sense of what
`
`you're talking about?
`
` Again, I'm not looking for privileged
`
`information.
`
` A. Well, I think -- I think it's been
`
`disclosed that I'm an expert in the district court
`
`case.
`
` Q. Okay. And nothing that you're talking
`
`about in connection with being an expert in the
`
`district court case has anything to do with the
`
`matters that are discussed -- well, strike that.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 015
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` I'm sure it's related in some way.
`
`Okay. I think I understand.
`
` Now, in connection with Dr. Matzger's
`
`declaration, which I believe you reviewed, there is
`
`some experimental work that Dr. Matzger did that is
`
`described therein.
`
` Do you recall seeing that?
`
` A. Yes. As I said, I just read it over the
`
`weekend. I recall he did some experimental data in
`
`there.
`
` Q. And my question is, you had no part in
`
`generating that experimental data. Correct?
`
` That was only Dr. Matzger?
`
` A. Correct.
`
` Q. Okay. So to the extent I have questions on
`
`the experimental data, I probably should take it up
`
`with Dr. Matzger. Is that fair?
`
` A. That's correct.
`
` Q. Have you ever spoken to Dr. Matzger in
`
`connection with this matter?
`
` A. No.
`
` Q. And have you spoken to any inventor in
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 016
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`connection with matter?
`
` And by "inventor," I mean the named
`
`inventors on the '708 patent.
`
` A. No.
`
` Q. Other than one of Merck's attorneys,
`
`whether in-house or at Williams Connolly, have you
`
`spoken to anyone else at Merck in connection with
`
`this matter?
`
` A. No.
`
` Q. Let's go to your declaration. Feel free to
`
`use the hard copy or the electronic copy, it is
`
`completely your choice. Let me know when you're
`
`ready to proceed.
`
` A. I'm ready.
`
` Q. Paragraph 2, now, it says in reaching the
`
`opinions I expressed therein you considered certain
`
`materials.
`
` Other than the Matzger declaration,
`
`that's a complete listing of the materials you
`
`considered. Correct?
`
` A. Yes. The stuff that's cited in my report
`
`and is now listed in that list of materials
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 017
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`considered is everything I considered.
`
` Q. Okay. And -- well, for whatever reason, I
`
`haven't got the materials considered that counsel
`
`for Williams Connolly emailed.
`
` In connection with that materials
`
`considered, can you describe it? Is there something
`
`in it that was not included on the report?
`
` A. No. I think it's everything that's cited
`
`in the report. I just wanted it in a list.
`
` Q. Fair enough. Thank you.
`
` A. Citing the things I considered.
`
` Q. Fair enough.
`
` So there's nothing new on that
`
`materials considered list that isn't already in this
`
`report. Is that fair?
`
` A. That's correct.
`
` Q. So I noted there are various exhibits
`
`mentioned in your declaration, including articles
`
`and some other things.
`
` I assume, in connection with this
`
`matter, you had the opportunity to review them in
`
`their entirety. Correct?
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 018
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` A. Yes. I believe that's correct.
`
` Q. And to the extent you wanted to express any
`
`opinions, offer any commentary on any exhibits
`
`referenced in your declaration, I assume you did so
`
`in Exhibit 2101. Is that fair?
`
` A. Is that my declaration? 2101?
`
` Q. That's your declaration. Yes.
`
` A. Yes. Yes.
`
` Q. Fair enough.
`
` Okay. So in paragraph 1, it says that
`
`you've been asked to offer opinions in connection
`
`with Claim 4 of the '708 patent. Correct?
`
` A. Yes.
`
` Q. And address certain things that -- certain
`
`points to Dr. Chorghade. Correct?
`
` A. Yes.
`
` Q. And, obviously, I understand that Claim 4
`
`is a dependent claim. It's dependent on Claim 2
`
`which is, in turn, dependent on Claim 1.
`
` But, generally, your focus is on the
`
`specific issues with Claim 4, not necessarily Claim 1
`
`and Claim 2. Is that correct?
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 019
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` A. Correct.
`
` Q. Now, with respect to Claim 4 -- and then I
`
`believe you have the '708 patent in front of you.
`
`If you want to look at it, that's fine.
`
` We agree that Claim 4 is not limited to
`
`any particular method of synthesis. Correct?
`
` A. No. Claim 4 is to a crystalline form of a
`
`particular compound that's a monohydrate.
`
` Q. Okay. We also agree that Claim 4 is not
`
`limited to any particular method of crystallization.
`
`Correct?
`
` A. That's correct.
`
` Q. So any method of crystallization, so long
`
`as it generates the crystalline monohydrate,
`
`would -- would be covered by Claim 4?
`
` MR. ZOLAN: Objection to form.
`
` A. In my non-lawyerly way, processes aren't
`
`covered by the claim. The claim is covering the
`
`substance of matter. So it doesn't matter how you
`
`make it. If you have it; you have it.
`
` BY MR. MALIK:
`
` Q. Okay. And let me ask you this in
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 020
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`connection with Claim 4:
`
` Other than the fact that it's a
`
`crystalline substance and a monohydrate, no other
`
`property is recited. Correct?
`
` A. Right. The compound itself is crystalline
`
`and monohydrate. That's all that is indicated in
`
`the claim. That's correct.
`
` Q. Okay. There's no recitations in Claim 4
`
`about stability that you see. Correct?
`
` A. The claim -- the claim lists no properties,
`
`so it doesn't say anything about the stability
`
`itself. That's correct. So, of course --
`
` Q. Nothing on --
`
` MR. ZOLAN: Hold on. Yeah. Thanks,
`
`Jitty.
`
` Go ahead and finish, Dr. Myerson.
`
` THE WITNESS: Yes.
`
` A. So, of course -- a given crystalline form
`
`will, of course, have a set of properties that go
`
`with that crystalline form.
`
` BY MR. MALIK:
`
` Q. Okay. First, Dr. Myerson, let me apologize
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 021
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`for interrupting you. That was not my intent. It's
`
`a little bit harder on Zoom. So, first, let me just
`
`apologize to you for that.
`
` A. Sure.
`
` Q. So -- just continuing. So there's no
`
`parameters in Claim 4 regarding any particular
`
`solubility, dissolution parameter, hygroscopicity,
`
`efficacy, or therapeutic parameters. Correct?
`
` A. That's correct.
`
` But, again, of course, for a given
`
`crystalline form, that crystalline form will have a
`
`set of properties that go with it.
`
` Q. Okay. Now, you are aware in connection --
`
`well, have you been made aware, in connection with
`
`this IPR, that Mylan has challenged other claims in
`
`connection with '708 patent?
`
` MR. ZOLAN: Hey, Allan -- objection to
`
`form.
`
` Just, you know, obviously, don't get
`
`into any communications that we've had with you,
`
`Allan. But if you can answer, go ahead.
`
` A. Well, in reading the Matzger declaration, I
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 022
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`know that you have challenged other claims.
`
` BY MR. MALIK:
`
` Q. That's fair. I'll accept that. So let me
`
`ask it this way:
`
` Other than the obviousness of Claim 4,
`
`as written out in your declaration, you're expressing
`
`no other opinion directed to any other challenged
`
`claim in connection with this inter partes review.
`
`Correct?
`
` A. That's correct.
`
` Q. You're leaving that stuff to Matzger. Is
`
`that correct?
`
` MR. ZOLAN: Object to form.
`
` A. That's correct.
`
` BY MR. MALIK:
`
` Q. In connection with your report, you're
`
`expressing no opinions as to anticipation directed
`
`to any challenged claim. Isn't that correct,
`
`Dr. Matzger?
`
` MR. ZOLAN: Objection to form.
`
` BY MR. MALIK:
`
` Q. Dr. Myerson. Dr. Myerson.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 023
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` A. I'm sorry. I mean, I'm just giving my
`
`opinion related to Claim 4. Is that the question?
`
` Q. Yes. Just the obviousness of Claim 4.
`
`Correct?
`
` A. Yes.
`
` Q. And, obviously, I presume, when you
`
`reviewed Dr. Matzger's declaration, you saw that he
`
`spent a little bit of time on inventorship issues?
`
` A. I don't remember that, actually.
`
` Q. Okay. I'll get to my next set of
`
`questions.
`
` It's fair to say that, in connection
`
`with your declaration, you are expressing no opinion
`
`regarding inventorship prior to any priority date of
`
`WO '498. Is that correct?
`
` A. That's correct. If it's not in my
`
`declaration, I'm expressing no opinion.
`
` Q. Okay. You're expressing no opinion on
`
`actual reduction to practice of any claim in the
`
`'708 patent prior to the priority date of WO '498.
`
`Is that correct?
`
` A. If it's not in my report, I'm not giving
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 024
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`such an opinion.
`
` Q. And just -- I'll close this out. Just a
`
`couple more questions on this, just so we have a
`
`clear understanding.
`
` You haven't considered anything with
`
`respect to prior inventions for any claim of the '708
`
`patent against any priority date of the '408 patent.
`
`Correct?
`
` I'm sorry. WO '498?
`
` A. Not that I recall. No.
`
` Q. Okay. In paragraph 20 of your declaration,
`
`you provide what you say is a provisional filing
`
`date of the -- of Claim 4 of the '708 patent. Do
`
`you see that?
`
` A. Yes.
`
` Q. Okay. And you are not even made aware of
`
`Merck's position as it relates to the effective
`
`filing date of any other claim in the '708 patent.
`
`Is that correct?
`
` MR. ZOLAN: Objection to form.
`
` A. I'm not aware of any issue of this type.
`
`\\\
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 025
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` BY MR. MALIK:
`
` Q. Fair enough.
`
` And my last question on this point,
`
`since I think I've beaten it to death literally, you
`
`were never asked, in connection with your
`
`declaration, to provide any opinion regarding
`
`inventorship. Correct?
`
` A. Correct.
`
` Q. A couple of other things. You have no
`
`access to the realtime feed. Is that correct?
`
` A. Yeah. I vaguely know what a realtime feed
`
`is. I'm not positive I do, but I, obviously, don't
`
`have access to it.
`
` Q. Fair enough.
`
` And also in connection with this
`
`deposition, since this is an IPR deposition, you
`
`understand that during any breaks you are not
`
`supposed to discuss the given testimony or
`
`anticipated testimony in connection with this IPR.
`
`Is that your understanding?
`
` A. Yes.
`
` Q. And then, also, I'm going to ask now a
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 026
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`series of questions, and unless I say otherwise,
`
`just to make the questions a little more
`
`straightforward, I'd ask that you respond from the
`
`perspective of a person of ordinary skill in the art
`
`as you've defined it. Fair enough?
`
` A. Yes.
`
` Q. Okay. Turn to paragraph 31 of your report.
`
`Let me know when you're ready to proceed.
`
` A. Yes.
`
` Q. Now, in paragraph 31, you state that, in
`
`the illustration above, referring to what's in
`
`paragraph 30, the asterisk indicates a center of
`
`symmetry at the stereogenic carbon atom. Is that
`
`correct?
`
` A. Yes.
`
` Q. And by "stereogenic carbon atom," another
`
`way of saying it, that's the chiral center.
`
`Correct?
`
` A. Correct.
`
` Q. And you've only depicted one asymmetric
`
`center in paragraph 30. Correct?
`
` A. Correct.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 027
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 28
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` Q. And so it's your understanding that
`
`sitagliptin only has one chiral atom; namely, the
`
`chiral carbon that's marked. Correct?
`
` (Pause in proceedings.)
`
` BY MR. MALIK:
`
` Q. Dr. Myerson, did you hear the question?
`
` A. I did. I'm just checking something.
`
` (Document review.)
`
` A. Yes.
`
` BY MR. MALIK:
`
` Q. Just so the transcript is clear, it's not
`
`clear whether you're saying, "yes," to my question
`
`or the answer to the question. Let me ask the
`
`question again and then you can answer the question.
`
` So my question was, and so it's your
`
`understanding that the sitagliptin only has one
`
`chiral atom; namely, the chiral atom that's marked in
`
`paragraph 30. Correct?
`
` A. Yes.
`
` Q. And so, as a result of only having one
`
`chiral carbon, that means there are only two
`
`possible isomers of sitagliptin, an (R) and an (S)
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 028
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 29
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`enantiomer. Correct?
`
` A. Yes. As far as I understand.
`
` Q. And a person of ordinary skill in the art
`
`could easily have determined the (R) and (S)
`
`configurations -- correct? -- of sitagliptin.
`
` A. I'm not sure what you mean, "easily
`
`determined."
`
` Know that there was an (R) and
`
`(S) configuration? Is that the question?
`
` Q. Well, let me break it up a little.
`
` You agree that a person of ordinary
`
`skill in the art, just looking at the structure of
`
`sitagliptin, could identify the chiral centers.
`
`Correct?
`
` A. Yes.
`
` Q. And the person of ordinary skill in the
`
`art, whether or not it's even marked on
`
`paragraph 30, would realize that sitagliptin only
`
`has one chiral atom. Correct?
`
` A. Yes. I believe that's correct.
`
` Q. And as a result of determining that it only
`
`has one chiral center, they would easily be able to
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 029
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 30
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`determine that it has only two possible isomers, an
`
`(R) and an (S). Correct?
`
` A. Once they determined it has one chiral
`
`center, those are the two possible enantiomers.
`
` Q. And what we talked about as far as
`
`determining the number of enantiomers and
`
`determining chiral centers, that is a very easy task
`
`for a person of ordinary skill in the art. Correct?
`
` A. I think, generally, that should be a skill
`
`that one of -- one of the ordinary skill in the art
`
`should be able to perform. I mean, there might be
`
`compounds it's more difficult to determine, but I
`
`think, generally, I agree with that.
`
` Q. Okay. But in the case of sitagliptin -- I
`
`know there may be other compounds, I completely
`
`understand.
`
` But in the case of sitagliptin, that
`
`would be an easy task for a person with ordinary
`
`skill in the art. Correct?
`
` A. To identify the chiral center, yeah. I
`
`agree with that.
`
` Q. In fact, undergraduate chemistry students
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 030
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 31
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`are taught to identify chiral centers in their first
`
`year of chemistry. Correct?
`
` MR. ZOLAN: Form.
`
` A. Actually, probably in their organic
`
`chemistry class, which is a secondary chemistry.
`
`But, yes.
`
` BY MR. MALIK:
`
` Q. Okay. Fair enough.
`
` Now, in paragraph 31 of your report,
`
`you also state that it's your understanding that what
`
`is known as sitagliptin is in the (R) configuration.
`
`Correct?
`
` A. Yes.
`
` Q. So the active form is not in the
`
`(S) form -- or (S) configuration. Correct?
`
` A. The form we know -- the form we know with
`
`sitagliptin is the (R) form. I'm not sure of the
`
`activity of the (S) form. I've never seen anything
`
`about it, actually.
`
` Q. Okay. Well, turn to paragraph 45 of your
`
`report. And, by all means, review it, Dr. Myerson.
`
`It's not a memory test. I think you've heard me say
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Mylan (IPR2020-00040) Ex. 1031 p. 031
`
`
`
`Allan S. Myerson, Ph.D. - November 3, 2020
`
`Page 32
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`that before too.
`
` The last sentence says that "Chiral
`
`molecules are important in the pharmaceutical
`
`industry because biological activity can differ
`
`significantly from one enantiomer to the other."
`
` Do you see that sentence?
`
` A. Yeah. That's certainly correct.
`
` Q. And the fact that sitagliptin i
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
