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` UNITED STATES PATENT AND TRADEMARK OFFICE
` _________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _________________________
` MYLAN INSTITUTIONAL LLC and PFIZER INC.,
` Petitioners,
` v.
` NOVO NORDISK A/S,
` Patent Owner.
` _________________________
` Case IPR2020-00324
` Patent 8,114,833
`
` CONFIDENTIAL
` ZOOM DEPOSITION OF LAIRD FORREST, Ph.D.,
`(Reported Remotely via Video & Web Videoconference)
` Lawrence, Kansas (Deponent's location)
` Thursday, January 21, 2021
` Volume I
`
`STENOGRAPHICALLY REPORTED BY:
`REBECCA L. ROMANO, RPR, CSR, CCR
`California CSR No. 12546
`Nevada CCR No. 827
`Oregon CSR No. 20-0466
`Washington CCR No. 3491
`JOB NO. SY001101
`PAGES 1 - 249
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`Novo Nordisk Ex. 2097, P. 1
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`MYLAN INSTITUTIONAL LLC and PFIZER INC.,
`Petitioners,
`v.
`NOVO NORDISK A/S,
`Patent Owner.
`_________________________
`Case IPR2020-00324
`Patent 8,114,833
`
`DEPOSITION OF LAIRD FORREST, Ph.D., taken
`on behalf of the Patent Owner, with the deponent
`located in Lawrence, Kansas, commencing at
`9:02 a.m., Thursday, January 21, 2021, remotely
`reported via web videoconference before
`REBECCA L. ROMANO, a Registered Professional
`Reporter, Certified Shorthand Reporter, Certified
`Court Reporter.
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` APPEARANCES OF COUNSEL
`(All parties appearing via web videoconference)
`
`For the Petitioner - Mylan Institutional LLC:
` PERKINS COIE
` BY: LARA J. DUEPPEN, Ph.D.
` Attorney at Law
` 1888 Century Park East
` Suite 1700
` Los Angeles, California 90067-1721
` (310) 788-9900
` ldueppen@perkinscoie.com
`
`and
` BRANDON M. WHITE
` Attorney at Law
` 700 13th Street, NW
` Suite 800
` Washington, D.C. 20005-3960
` (202) 654-6200
` bmwhite@perkinscoie.com
`
`/////
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` APPEARANCES OF COUNSEL(cont'd)
`(All parties appearing via web videoconference)
`
`For the Petitioner - Pfizer Inc.:
` WILLKIE FARR & GALLAGHER LLP
` BY: MICHAEL W. JOHNSON
` Attorney at Law
` 787 Seventh Avenue
` New York, New York 10019-6099
` (212) 728-8137
` mjohnson1@willkie.com
`
`For the Patent Owner:
` FENWICK & WEST
` BY: RYAN JOHNSON
` BY: KATHRYN EASTERLING
` Attorneys at Law
` 902 Broadway
` Suite 14
` New York, New York 10010-6035
` (212) 430-2600
` ryan.johnson@fenwick.com
` keasterling@fenwick.com
`
`/////
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` APPEARANCES OF COUNSEL(cont'd)
`(All parties appearing via web videoconference)
`
`ALSO PRESENT:
` Matt Grienert, Mylan
` Rafael "Raffy" Puno, Videographer
`
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` I N D E X
`DEPONENT EXAMINATION
`LAIRD FORREST, Ph.D. PAGE
`VOLUME I
`
` BY MR. RYAN JOHNSON 11
`
` E X H I B I T S
`NUMBER PAGE
` DESCRIPTION
`Exhibit 2095 Chapter 11 - Eleventh Edition
` Statistics by Robert S. Witte
` and John S. Witte; 203
`
` PREMARKED EXHIBITS
`NUMBER PAGE
` DESCRIPTION
`Exhibit 1001 United States Patent
` No. US 8,114,833 B2;
`
`Exhibit 1004 Flink – International
` Publication No. WO 03/002136;
`
`Exhibit 1005 “Betz” – International Publication
` No. WO 2004/004781;
`/////
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` PREMARKED EXHIBITS(cont'd)
`NUMBER PAGE
` DESCRIPTION
`Exhibit 1013 Excerpt of REMINGTON’S
` PHARMACEUTICAL SCIENCES
` (18th ed. 1990), Chapter 79;
`
`Exhibit 1106 Reply Declaration of
` Laird Forrest, Ph.D. (SEALED);
`
`Exhibit 1114 Robblee, Hypoxemia after
` Intraluminal Oxygen Line
` Obstruction During
` Cardiopulmonary Bypass,
` 48 ANN. THORAC. SURG.
` 575 (1989);
`
`Exhibit 1115 Jeffrey, The Preparation
` of a Sterile Solution of
` Mannitol, 20 AM. J. HOSP.
` PHARM. 255 (1963);
`
`/////
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`Novo Nordisk Ex. 2097, P. 7
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` PREMARKED EXHIBITS(cont'd)
`NUMBER PAGE
` DESCRIPTION
`Exhibit 2033 Hammarlund, E. R., &
` Pedersen-Bjergaard, K.
` Hemolysis of erythrocytes
` in various iso-osmotic
` solutions. 50 JOURNAL OF
` PHARMACEUTICAL SCIENCES,
` 24-30 (1961);
`
`Exhibit 2034 Hutak, C. M., et al.
` The use of cell lysis as
` an index of ocular irritation
` potential. 5 JOURNAL OF
` TOXICOLOGY: CUTANEOUS
` AND OCULAR TOXICOLOGY,
` 143-161 (1986);
`
`Exhibit 2052 Certified Translation of
` NNVICT-MYL_03642127-142.
`
`/////
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` Lawrence, Kansas; Thursday, 21, 2021
` 9:02 a.m.
` ---o0o---
`
` (Transcript contains exhibits that have been
`premarked.)
`
` THE VIDEOGRAPHER: Good morning. We are
`now on the record. Today's date is January 21,
`2021, and the time is 9:02 a.m. Central Time.
` This is the video deposition of
`Laird Forrest Ph.D. in the matter of Mylan
`Institutional LLC, et al. v. Novo Nordisk A/S,
`filed in the United States Patent and Trademark
`Office Before the Patent Trial and Appeal Board,
`Patent No. 8,114,833.
` This deposition is taking place via Web
`videoconference, with all participants attending
`remotely due to the COVID-19 pandemic. My name is
`Raffy Puno. I am the videographer representing
`TransPerfect.
` Would counsel on the conference please
`identify yourselves and state whom you represent,
`beginning with the questioning attorney.
` MR. RYAN JOHNSON: This is Ryan Johnson
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`from Fenwick & West representing patent owner Novo
`Nordisk, and with me is my colleague Katy
`Easterling.
` MS. DUEPPEN: This is Lara Dueppen from
`Perkins Coie on behalf of petitioner Mylan
`Institutional. Also with me is Brandon White from
`Perkins Coie and Matt Grienert from Mylan.
` MR. MICHAEL JOHNSON: For the record,
`this is Michael Johnson from Willkie Farr &
`Gallagher LLP on behalf of the petitioner Pfizer
`Inc.
` THE VIDEOGRAPHER: Our court reporter
`today is Rebecca Romano representing TransPerfect.
`The court reporter will now swear in the witness.
` THE STENOGRAPHER: Good morning. And at
`this time I will ask counsel to agree on the record
`that there is no objection to this deposition
`officer administering a binding oath to the
`deponent via remote videoconference, starting with
`the noticing attorney, please.
` MR. RYAN JOHNSON: No objection.
` MS. DUEPPEN: No objection from the
`petitioner.
`
`/////
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` LAIRD FORREST, Ph.D.,
`having been first duly sworn, was examined and
`testified as follows:
` EXAMINATION
`BY MR. RYAN JOHNSON:
` Q. Good morning, Dr. Forrest.
` A. Good morning.
` Q. Can you hear me all right?
` A. You have a slight clip occasionally, but
`if you don't mind I'll just ask you to repeat if I
`have trouble understanding.
` Q. That's fine. Thank you.
` Now, you understand you're joining us for
`a deposition today, right, Dr. Forrest?
` A. That is correct.
` Q. Okay. And where are you now?
` A. I am in Lawrence, Kansas.
` Q. Specifically, though, what -- where are
`you?
` A. Oh, I am in my office.
` Q. At the University of the Kansas?
` A. Yes, at the University of Kansas.
` Q. Got it. And is anybody there with you?
` A. No, just me.
` Q. And do you have any materials with you to
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`use as you testify today?
` A. Counsel provided me copies -- clean
`copies of my exhibits that were filed with my
`report -- well, my rebuttal and my original report.
` Q. So you have with you the two declarations
`that you filed in this IPR and the exhibits that
`you cited in those declarations; is that right?
` A. Yes, sir, that's correct.
` Q. All right. A moment ago you referenced
`your reports. I'm going to try to call those your
`declarations today, but we'll understand each other
`if we refer to them as reports instead of
`declarations; isn't that right?
` A. Yes. And I sometimes inadvertently call
`my second report a rebuttal or a reply. But if I
`say one of those, I'm meaning my second report.
` Q. I'm going to try to stick with reply.
` A. Okay.
` Q. So maybe we can shoot for that, but we
`understand each other.
` You've been deposed before, right,
`Dr. Forrest?
` A. Yes, sir, I have been.
` Q. And about how many times have you been
`deposed?
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` A. Seven, eight, maybe.
` Q. And you've been deposed via video before,
`correct?
` A. Yes. I was deposed by video on this very
`matter for my first report.
` Q. And have you had any other video
`depositions other than in this matter?
` A. No. This is my only video -- or only
`matter I've had a video deposition of.
` Q. Okay. Though at least you've been
`through this deposition process a few times, I'll
`just refresh your memory really quickly on how this
`goes.
` So I'll be asking questions, and you are
`to answer them. If your counsel objects to my
`question, you should answer it anyway unless your
`counsel instructs you not to.
` You understand?
` A. Yes, sir, I understand.
` Q. Okay. Just let me know if you need a
`break. Okay? And I'll do my best to accommodate
`you. I'd just ask, like every taking attorney
`asks, that we not take a break while there's a
`question pending. Is that okay?
` A. I understand that.
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` Q. Okay. I'd like to take a look at your
`reply declaration, which is Exhibit 1106.
` MR. RYAN JOHNSON: If we can put that in
`the chat and put it on screen.
` THE VIDEOGRAPHER: Sure. One moment,
`please.
` Q. (By Mr. Ryan Johnson) Dr. Forrest, you
`have a hard copy there with you, or are you pulling
`up an electronic copy?
` A. I have the hard and I have the
`electronic. My hard tends to pop out of the
`binders clips. So, flipping around, I sometimes
`use those electronic and the hard copy.
` Q. Okay. So you're familiar with this
`document in Exhibit 1106. Is that right,
`Dr. Forrest?
` A. Well, this is -- well, it appears to be
`my reply declaration. So yes, I'm quite familiar
`with it.
` Q. Okay. And you prepared it in connection
`with this IPR proceeding, correct?
` A. Yes. I prepared it along with counsel in
`this proceeding.
` Q. And you understand that this proceeding
`concerns U.S. Patent No. 8,114,833?
`
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` A. Yes, sir, that's my understanding.
` Q. And you'll understand me if I refer to
`that as the '833 patent, right?
` A. Yes. I understand that shorthand.
` Q. And that's how you refer to it in your
`declaration, correct?
` A. Yes. I believe I generally refer to it
`as the '833.
` Q. And did you review your reply declaration
`that's Exhibit 1106 in preparation for today's
`deposition?
` A. Yes, I reviewed my reply.
` Q. And I think you mentioned this a little
`while ago. You submitted another declaration in
`connection with this IPR as well, correct?
` A. Yes. I submitted an initial declaration,
`I believe, in December 2019 or thereabouts.
` Q. And did you review that declaration in
`preparation for today's deposition?
` A. Yes, I -- I reviewed it.
` Q. Can I ask you to turn to paragraph 15 of
`Exhibit 1106, which is your reply declaration.
`It's on page 8 -- actually, page 7.
` Just let me know when you're there with
`me, Dr. Forrest.
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` A. It begins 7, goes through 8?
` Q. Right.
` A. Yes, I am there.
` Q. You begin paragraph 15 by stating, "As an
`initial matter, I note that my opinion that Flink
`anticipates Claims 1-10 of the '833 patent was and
`remains based primarily on Claim 14 of Flink."
` Do you see that?
` A. Yes, I see that.
` Q. Okay. And then on the next page in the
`same paragraph you say, "In particular, my opinion
`regarding Claim 14 is based on the embodiment
`described through its dependence on Claims 13, 12,
`11, 10, 8, 6, and 5."
` Do you see that?
` A. Yes, sir, I see that.
` Q. Okay. And so what you're saying there
`is, as I understand it, Claim 14 depends from
`Claim 13, which depends from Claim 12, which
`depends from Claim 11, and so on. Is that -- is
`that what you're saying there in that sentence that
`I quoted?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: That's approximately what
`I'm saying. When you read the claims, you
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`generally really read from, say, 5 to 6 to 8 to 10
`to 11 to 12 to 13 to 14 as you increase your
`description limitations of the embodiment, but
`your -- yes, that describes the dependency lineage.
` Q. (By Mr. Ryan Johnson) Okay. I'm just
`trying to kind of see if we can agree on some
`terminology here.
` A. Sure.
` Q. Will you understand me if I refer to that
`sequence of claims as a chain of dependencies? Is
`that fair?
` A. I don't know that I've ever heard that
`exact terminology used. I like to think of 14 as
`being a dependent claim that inherits the
`limitations from its prior claims; so as long as we
`can agree that that's my understanding when you use
`that terminology.
` Q. Sure. Yeah, no, I think we can agree on
`that. And maybe I'm kind of coining a phrase here
`a little bit. I just -- and we can agree on a
`different phrase if you want. I'm just trying to
`make sure we understand each other. We could call
`it a sequence of dependencies or something like
`that. I -- I understand what you're saying. As
`long as you understand what I'm saying, I think we
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`can proceed.
` So that chain of dependencies here in
`your paragraph 15, that's not the only chain of
`dependencies that's possible for Claim 14, is it?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: So pardon me just a moment
`while I actually flip to that particular sentence.
` Q. (By Mr. Ryan Johnson) Yeah. And why
`don't we do that. Why don't we look at the Flink
`reference, which is Exhibit 1004, and specifically
`page 48. And I'm going by the page numbering on
`the bottom right-hand corner of the document.
` A. Okay.
` Q. So are you there with me at Claim 14,
`Dr. Forrest?
` A. Yes. I am at Claim 14.
` Q. Okay. And so my question was that chain
`of the dependencies that you set out in paragraph
`15 of your report -- your reply report, it's not
`the only chain of dependencies possible for
`Claim 14, correct?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: Well, Claim 14 descends
`from or is a more narrow interpretation of, for
`example, Claim 13. And Claim 13 does depend -- or
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`could depend from more than one parent claim. So
`as I said, that -- the terminology is still a
`little bit not one I'm entirely comfortable
`using -- choosing to use, but I'm happy to describe
`the -- the dependency and how a POSA would read the
`claims of Flink and directly arrive at the
`embodiment described in Claim 14.
` Q. (By Mr. Ryan Johnson) So, for example --
`so Claim 14 depends from Claim 13, correct?
` A. It is correct that Claim 14 depends from
`Claim 13.
` Q. And then Claim 13 depends from any one of
`Claims 1 through 12, correct?
` A. It is -- as it states here that Claim 13
`can be a dependent of one of those other claims.
` Q. So another possible chain of dependencies
`for Claim 14 would be 14 to 13 to 1, right?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: It's possible that a POSA
`could begin at Claim 1 and then go to claim -- I
`believe you said 12 and then 13. Of course, a POSA
`typically begins at the broadest claim that
`describes or includes the limitations of their
`invention and then reads into more narrow
`embodiments with further limitations.
`
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`Novo Nordisk Ex. 2097, P. 19
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
`
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`
`CONFIDENTIAL
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`Page 20
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` So it can -- I mean, I'm -- you're -- I
`mean, I don't want to correct, but I feel you're
`reading the claims backwards, very much like trying
`to start at the end of a novel and figure out what
`it's about by reading from the back page.
` Q. (By Mr. Ryan Johnson) Well, the way you
`described it in your report was that "My opinion
`regarding Claim 14 is based on the embodiment
`described through its dependence on Claims 13, 12,
`11, 10, 8, 6, and 5," right?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: I believe you read
`essentially back my terminology as it is right here
`in my report on the first three sentences --
` Q. (By Mr. Ryan Johnson) Right.
` A. -- of what they state.
` Q. And so Claim 14 could also depend from
`Claim 13 -- well, Claim 14 must depend from
`Claim 13, which can also depend from, for example,
`Claim 1, right?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: As I said, you could
`begin -- a POSA could begin with Claim 1 to
`describe a particular embodiment, and then they
`would read in additional limitations on that
`
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`Novo Nordisk Ex. 2097, P. 20
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
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`CONFIDENTIAL
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`Page 21
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`Claim 1.
` I may have listed these in that order in
`my report, but that's not to imply that's a
`particular reading order. I'm simply going in a
`numerical numbering here when I composed the
`report.
` Q. (By Mr. Ryan Johnson) So do you know how
`many chains of dependencies possible stemming from
`Claim 14?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: I haven't made any
`calculation, but that's really not relevant to an
`understanding, because that's -- as I said, that's
`transversing a read-your-own-adventure book from
`the last page of the book and trying to arrive at
`the front of the book.
` You actually begin -- when you're reading
`embodiments, you would look, say, at Claim 5 and
`find that it includes a limitation that you are in
`your embodiment. And then you would look to
`subsequent claims that include additional
`limitations that describe your embodiment.
` So I wouldn't read a claim backwards like
`that, and I haven't made any calculations of
`embodiments.
`
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`
`Novo Nordisk Ex. 2097, P. 21
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
`
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`CONFIDENTIAL
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`Page 22
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` Q. (By Mr. Ryan Johnson) And you didn't
`make any calculation of the number of chains of
`dependencies that could flow from Claim 5 either,
`right?
` MS. DUEPPEN: Object to form. Relevance.
` THE DEPONENT: Well, it really wasn't
`necessary to make any calculations of number of
`pathways because, as I said, you begin and you
`read -- you begin with an independent claim, and
`then you read dependent claims that include
`additional limitations that -- that your embodiment
`lies within the scope of that.
` So it's a forward process. And -- as an
`engineer, I -- I tend to like to use numbers a lot.
`But this wasn't a place where I was doing numerical
`calculations to determine a number of chains.
` Q. (By Mr. Ryan Johnson) Okay. Now let's
`look at Claim 11 for a minute. Claim 11 in Flink,
`which is Exhibit 1106, is to a formulation
`according to any one of Claims 1-10 further
`compromising a preservative, correct?
` A. Yes, you have read Claim 11.
` Q. Okay. And then the next claim, Claim 12,
`is to a concentration range for "said
`preservative."
`
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`Novo Nordisk Ex. 2097, P. 22
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
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`CONFIDENTIAL
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`Page 23
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` Do you see that?
` A. Claim 12, yes, describes an embodiment --
`a further embodiment of 11, where the preservative
`has a particular concentration from .1 milligram
`per milliliter to 20 milligrams per milliliter.
` MR. RYAN JOHNSON: If we could pull that
`up, claim -- I mean, excuse me -- Exhibit 1106.
`Oh, I'm sorry. I've referenced --
` THE VIDEOGRAPHER: It's up.
` MR. RYAN JOHNSON: -- Exhibit 11 -- 1004.
` Q. (By Mr. Ryan Johnson) So Claims 11 and
`12 recite the term "preservative," correct?
` A. Claim 12 -- well, Claim 11 states that
`the formulation further comprises a preservative,
`and Claim 12 then describes a particular range of
`concentrations for a preservative.
` Q. Okay. And Claim 14, it does not
`necessarily depend from Claim 12, does it?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: Claim 14 is a formulation
`according to Claim 13. So as I, you know, for
`example, read the claims -- you know, I began at 5
`and went through more narrow embodiments to 6, 8,
`10, 11, and then I saw that 12 incorporated
`additional limitations in which we -- my
`
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`
`Novo Nordisk Ex. 2097, P. 23
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
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`CONFIDENTIAL
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`embodiment -- the embodiment was within the scope.
`And then 13 incorporated additional limitations.
`And then 14 included additional limitations too.
` Q. (By Mr. Ryan Johnson) Okay. So that
`wasn't my question. My question was Claim 14 does
`not necessarily depend from Claim 12, does it?
` MS. DUEPPEN: Object to form.
` Q. (By Mr. Ryan Johnson) I'm not asking you
`about what analysis you did.
` A. Right.
` Q. I'm just asking you a question about
`Claim 14, which you said was the primary basis for
`your anticipation opinion. And I just want to know
`does Claim 14 necessarily depend from Claim 12?
` MS. DUEPPEN: Same objections.
` THE DEPONENT: You could have an
`embodiment of claim, say -- and if I understand
`your question correctly.
` So you could have an embodiment of
`Claim 13 -- or pardon me. You could have an
`embodiment of Claim 13 that did not descend from
`Claim 5 if you did not have some of the same
`limitations in your particular embodiment. But, as
`I said, that would be a different embodiment than
`what I was relying upon in my analysis.
`
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`
`Novo Nordisk Ex. 2097, P. 24
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
`
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`CONFIDENTIAL
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` Q. (By Mr. Ryan Johnson) So Claim 14
`depends from Claim 13, right?
` A. Yes. Claim 14 depends from Claim 13.
` Q. And Claim 13 depends from any one of
`Claims 1 through 12, correct?
` A. It states here that it is a formulation
`according to any one of Claims 1 through 12.
` Q. Okay. So Claim 13 does not necessarily
`depend from Claim 12, does it?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: I believe I -- I've
`already stated this before. But as I said before,
`if you had a different embodiment than what I
`depended upon in my anticipation arguments, then it
`is possible that you could have a particular
`embodiment that had a different dependency to
`arrive at different ultimate limitations.
` But as I have stated before, in my
`arguments, I relied upon Claim 5 to 6 to 8 to 10 to
`11 to 12, 13, then 14 to arrive at the embodiment
`in claims that I depended upon in my anticipation
`arguments.
` Q. (By Mr. Ryan Johnson) You said it's
`possible that you could have a particular
`embodiment that had a different dependency, and so
`
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`
`Novo Nordisk Ex. 2097, P. 25
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
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`that could include a dependency that does not
`include Claim 12, for example, right?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: It's not unusual for a
`patent to describe different embodiments. That's
`the purpose that we put dependent claims in to
`describe particular embodiments. Essentially
`you -- you have a Ford, and now you say it's a Ford
`four-door, and now you say it's a Ford four-door
`with an automatic transmission. You're really
`narrowing it down until you have the formulation
`that I -- I use -- well, that sounds like a car.
`Bad analogy. But you arrive at the embodiment that
`you're using in your anticipation arguments, for
`example.
` Q. (By Mr. Ryan Johnson) And so the -- an
`embodiment that has a dependency that doesn't
`include Claims 11 and 12 wouldn't specifically
`reference a preservative, correct?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: So I believe you said an
`embodiment that did not have a preservative would
`not reference Claims 11 and 12?
` Q. (By Mr. Ryan Johnson) Well, sir, the
`other way around.
`
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`
`Novo Nordisk Ex. 2097, P. 26
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
`
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`CONFIDENTIAL
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` A. The other way around?
` Q. Yeah. You said -- you said it was
`possible to have an embodiment that has a different
`dependency than the one that you set forth in your
`report. So I'm -- I'm trying to sort of frame my
`questions according to your understanding here.
` So what I'm saying is an embodiment that
`has a -- a dependency that doesn't include
`Claims 11 and 12, that embodiment doesn't recite a
`preservative, right?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: So I could have an
`embodiment of an invention where, say, the
`formulator did not include a preservative, and then
`I -- I wouldn't necessarily in that case, for
`example, use Claim 11 or part -- yes, Claim 11.
` Q. (By Mr. Ryan Johnson) Is claims --
`Claims 1 through 10 don't recite a preservative,
`right?
` A. I don't recall. Allow me to scan. It
`wouldn't make a lot of sense to add a preservative
`in a dependent claim if it was present in, say, the
`independent claims. But I don't see the -- the
`limitation of a preservative in the prior claims.
` Q. Now, this chain of dependencies that we
`
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`Novo Nordisk Ex. 2097, P. 27
`Mylan Institutional v. Novo Nordisk
`IPR2020-00324
`
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`CONFIDENTIAL
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`were -- we've been talking about that you set forth
`in paragraph 15 of your reply report. So as you
`described it in your report, the chain ends in
`Claim 5, right?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: The claim -- pardon me.
` The chain -- well, I would say the chain
`begins at Claim 5 and arrives at Claim 14. So I --
`sorry -- I just simply don't read backwards; I read
`forward. That's how we read patents.
` Q. (By Mr. Ryan Johnson) Just to be clear,
`that's not how you put it in your report, though,
`did you?
` MS. DUEPPEN: Object to form.
` THE DEPONENT: I said 14 is based on an
`embodiment described through its dependence on the
`claim. That's how I state it, but as I -- I'm
`describing here, you start out at 5 and read
`through 14. But this is how the dependence
`proceeds to arrive. I think we're just simply
`reaching a roadblock by this strange coin of
`terminology here of "chain of dependencies,"
`which -- I am not comfortable using because I've
`never really used it before.
` Q. (By Mr. Ryan Johnson) You understand
`
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`Novo Nordisk Ex. 2097, P. 28
`Mylan Institut