throbber
3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________
`ILLUMINA, INC., )Case
` )IPR2020-00988
` Petitioner, )U.S. Patent 10,407,458
` )IPR2020-01065
`vs. )U.S. Patent 10,407,459
` )IPR2020-01125
`THE TRUSTEES OF COLUMBIA UNIVERSITY )U.S. Patent 10,457,984
`IN THE CITY OF NEW YORK )IPR2020-01177
` )U.S. Patent 10,435,742
` Patent Owner. )IPR2020-01323
`______________________________________)U.S. Patent 10,428,380
`
` VIDEOTAPED DEPOSITION OF FLOYD ROMESBERG, Ph.D.
`
`(Reported Remotely via Video & Web Videoconference)
` Monday, March 15, 2021
` 7:35 a.m. PST
`
`______________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`Columbia Ex. 2072
`Illumina, Inc. v. The Trustees
`of Columbia University in the
`City of New York
`IPR2020-00988, -01065,
`-01177, -01125, -01323
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 2
` VIDEOTAPED DEPOSITION OF FLOYD ROMESBERG,
`Ph.D., a witness called on behalf of Patent Owner
`Columbia University, before Amy A. Brauser, Notary
`Public, in and for the Commonwealth of Virginia, on
`Monday, the 15th day of March, 2021, commencing at
`7:35 a.m.
` * * * * * * * *
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`Digital Evidence Group C'rt 2020
`
`202-232-0646
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`

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`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 3
`
` ALL APPEARANCES VIA VIDEOCONFERENCE
`
`ON BEHALF OF THE PETITIONER:
` WILLIAM ZIMMERMAN, Esquire
` ANDREW MORRELL, Ph.D., Esquire
` Knobbe, Martens, Olson & Bear, LLP
` 1717 Pennsylvania Avenue, N.W.
` Washington, DC 20006
` (202) 640-6400
` bill.zimmerman@knobbe.com
` andrew.morrell@knobbe.com
` (and)
` NATHANAEL LUMAN, Ph.D., Esquire
` Knobbe, Martens, Olson & Bear, LLP
` 3579 Valley Centre Drive, Suite 300
` San Diego, California 92130
` (858) 707-4000
` nate.luman@knobbe.com
`
`ON BEHALF OF THE TRUSTEES OF COLUMBIA UNIVERSITY IN
`THE CITY OF NEW YORK:
` ROBERT S. SCHWARTZ, Ph.D., Esquire
` ZACHARY L. GARRETT, Esquire
` Venable, LLP
` 1290 Avenue of the Americas, 20th Floor
` New York, New York 10104
` (212) 218-2200
` rschwartz@venable.com
` zgarrett@venable.com
`
`ALSO PRESENT VIA VIDEOCONFERENCE:
` Billy Fahnert, Video Technician
` Marcus Burch, Illumina
` Teresa Chen, Columbia University
` Kenneth Johnson
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`Digital Evidence Group C'rt 2020
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`202-232-0646
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`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
` INDEX OF EXAMINATIONS
`By Mr. Schwartz . . . . . . . . . . . . . Page 7, 340
`By Mr. Zimmerman . . . . . . . . . . . . . . Page 333
`
`Page 4
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` INDEX OF EXHIBITS
`NUMBER DESCRIPTION PAGE
`Exhibit 1038 Declaration of Floyd Romesberg, 10
` Ph.D., in Support of Petition for
` Inter Partes Review of U.S.
` Patent No. 10,407,458
`Exhibit 1098 List of Documents Considered by 12
` Floyd Romesberg, Ph.D.
`Exhibit 2051 Declaration of Floyd Romesberg, 12
` Ph.D., IPR2013-00517
`Exhibit 2013 Video Deposition of Floyd 20
` Romesberg, Ph.D., July 8, 2014
`Exhibit 2053 Meng Thesis Chart 24
`Exhibit 2054 Request for Ex Parte 73
` Reexamination Transmittal Form
`Exhibit 1043 United States Patent 86
` No. 5,763,594; Hiatt
`Exhibit 1060 Article by Hovinen, et al., 1994 86
`Exhibit 2055 Declaration of Floyd Romesberg, 105
` Ph.D., In Support of Patent Owner
` Illumina Cambridge Ltd.,
` Preliminary Response
`Exhibit 2056 Hovinen Figure 1 116
`Exhibit 1033 Article by Welch, et al., 1999 122
`Exhibit 2021 WO 96/23807, Kwiatkowski 127
`Exhibit 1115 Article by Dominguez, et al., 147
` 2000
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`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 5
` INDEX OF EXHIBITS (con't) PAGE
`Exhibit 1044 Article by Pelletier, et al., 166
` 1994
`Exhibit 2057 Article by Pelletier, et al., 193
` 1996
`Exhibit 2058 Article by Yamtich and Sweasy, 202
` 2010
`Exhibit 2059 Tabor and Richardson article, 210
` 1995
`Exhibit 2060 Article by Gardner and Jack 213
` article, 1999
`Exhibit 2061 Article by Evans, et al., 2000 216
`Exhibit 1039 Article by Michael Metzker, et 226
` al., 1994
`Exhibit 2063 Drawing of 3'-O-methyl dATP 260
`Exhibit 2064 Drawing of 3'-O-2-nitrobenzyl 269
` dATP
`Exhibit 2065 Drawing of 3'O-allyl dATP 271
`Exhibit 2066 Drawing of linker, 276
` propargylamine-allyl
`Exhibit 2067 Article by Kranaster and Marx, 278
` 2010
`Exhibit 2068 Final Written Decision in 298
` IPR2018-00797
`Exhibit 2052 Videotaped Deposition of Floyd 303
` Romesberg, Ph.D., September 19,
` 2018, Volume I
`Exhibit 2070 Video Deposition of Floyd 310
` Romesberg, Ph.D., January 14,
` 2014
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`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 6
` THE VIDEOGRAPHER: We are on the record.
` This is the remote video deposition of
` Dr. Floyd Romesberg in the matter of Illumina
` Incorporated versus The Trustees of Columbia
` University in the City of New York, filed in
` the United States Patent and Trademark Office.
` My name is Billy Fahnert. I am the video
` technician today. The court reporter is
` Amy Brauser. We are here on behalf of Digital
` Evidence Group. Today's date is March 15th,
` 2021. The time at the witness' location is
` 7:35 a.m. All parties have stipulated to the
` witness being sworn in remotely.
` Counsel, please, identify yourselves for
` the record and then the witness will be sworn
` in.
` MR. SCHWARTZ: I can start. For patent
` owner, I am Robert Schwartz. With me is
` Zachary Garrett. We are both from the Venable
` Law Firm. Also present is Teresa Chen,
` in-house counsel from Columbia University, and
` Dr. Kenneth Johnson.
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`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 7
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` MR. ZIMMERMAN: Bill Zimmerman of
` Knobbe, Martens, Olson & Bear on behalf of
` Illumina, Inc. and the witness, Dr. Romesberg.
` With me are Nate Luman and Andrew Morrell of
` Knobbe, Martens. Also with me is
` Marcus Burch, in-house counsel at petitioner
` Illumina, Inc.
` FLOYD ROMESBERG, Ph.D.,
`having been first duly sworn to tell the truth, was
`examined and testified as follows:
` EXAMINATION
`BY MR. SCHWARTZ:
` Q. Good morning, Dr. Romesberg. It's good
`to see you again.
` A. Hi, Bob.
` Q. You know the preliminaries. You've been
`through this before. I'll just ask you to state
`your full name and address -- home address for the
`record.
` A. Floyd Romesberg. As always, I can't
`remember my address, so I'm going to check my
`license, if that's okay. 8109 Camino del Sol,
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
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`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 8
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`La Jolla, California 92037.
` Q. And, Dr. Romesberg, is there any reason
`you will not be able to give truthful testimony
`today?
` A. No.
` Q. If at any time you do not understand my
`question, please, let me know. If you do not say
`otherwise, I will assume that if you answered my
`question, that you understood my question. Okay?
` A. Okay.
` Q. Did you meet with attorneys in
`preparation for your deposition today? And I'm only
`asking for a yes-or-no answer.
` A. Yes.
` Q. And what are the names of the attorneys
`you met with, if you remember?
` A. Nate, Kerry, and Bill, who are all, I
`believe, on this call.
` Q. And how many times did you meet with
`those attorneys in preparation for your deposition?
` A. Four.
` Q. When did those meetings take place?
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
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`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
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`Page 9
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` A. Thursday through Sunday.
` Q. And approximately how much time did you
`spend preparing for your deposition?
` A. It was about three hours per meeting,
`three or four hours. I think one went beyond three
`hours up to about four. And then I probably spent a
`couple additional hours rereading my dec.
` Q. Outside of those meetings, did you meet
`with your attorneys at any other time?
` MR. ZIMMERMAN: Objection to form.
` THE WITNESS: Recently about this case?
`BY MR. SCHWARTZ:
` Q. Yes.
` A. I had a one-hour conversation with them
`a week ago today, and then, yeah, some conversations
`over the past months, but I don’t recall
`specifically when they were.
` Q. And did you speak with anybody else
`other than those attorneys that you mentioned about
`your deposition?
` A. No.
` Q. And what did you do to prepare for your
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
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`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 10
`
`deposition?
` A. Just read my declaration, reviewed some
`of the materials that I had discussed to make sure
`that I was familiar with them.
` Q. In these proceedings, you submitted an
`expert declaration in support of Illumina's petition
`for inter partes review of US Patent
`Number 10,407,458. I'm going to put that in front
`of you as Exhibit 1038.
` (Exhibit Number 1038 was marked for identification.)
` MR. SCHWARTZ: So whoever's doing this,
` can you put that up on the screen? Thank you.
`BY MR. SCHWARTZ:
` Q. And I understand you have a hard copy of
`this. Feel free to look at that hard copy, as long
`as it has no notes on it, which your attorney has
`represented to me it does not; is that correct?
` A. That is correct, yes.
` Q. And Exhibit 1038 is your expert
`declaration in support of Illumina's petition for
`inter partes review of US Patent Number 10,407,458;
`is that correct?
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`Digital Evidence Group C'rt 2020
`
`202-232-0646
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`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 11
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` A. Yes, it is.
` Q. And if you turn to the last page, that's
`your signature; is that correct?
` A. That is correct.
` Q. When did you first start working on
`preparing this declaration?
` A. I don't -- I don't remember the exact
`dates, but I'm guessing it was several weeks before
`the submission date, before the date that I signed.
`It was probably two or three weeks -- it was when I
`started working on that.
` Q. And what did you do to prepare your
`expert declaration?
` A. Read the materials and just thought
`about it and discussed it with my attorneys.
` Q. Would you, please, turn to Paragraph 21
`that's on page 5?
` A. I'm there.
` Q. And in Paragraph 21, you state that
`Exhibit 1098 is a listing of documents that you
`considered and reviewed in connection with providing
`your declaration. Do you see that?
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
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`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 12
`
` A. I do.
` Q. I'd like to put that exhibit in front of
`you as Exhibit 1098.
` (Exhibit Number 1098 was marked for identification.)
`BY MR. SCHWARTZ:
` Q. Do you recognize this as that list of
`documents that you considered and reviewed in
`connection with providing your declaration?
` A. Yes, it appears to be.
` Q. Did you consider any other materials
`other than those listed in Exhibit 1098 in forming
`the opinions that you expressed in your declaration?
` A. Not that I can recall right now, no.
` MR. SCHWARTZ: I'd like to mark as
` Exhibit 2051 the Romesberg declaration in
` IPR2013-00517. Again, court reporter, could
` you mark this as Exhibit 2051?
` (Exhibit Number 2051 was marked for identification.)
`BY MR. SCHWARTZ:
` Q. I'm putting in front of you
`Exhibit 2051, which is entitled, Declaration of
`Floyd Romesberg, Ph.D. This is your expert
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`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 13
`declaration that you submitted in IPR2013-00517. Do
`you recall submitting this declaration?
` A. I -- I -- yeah, I believe so. I don't
`think I have that in front of me; is that correct?
`I don't -- I don't think that's included in the
`materials that I have.
` Q. That may be the case, Dr. Romesberg.
` A. Okay. So I -- it -- it appears to be
`that declaration.
` Q. And you -- and you submitted this
`declaration on behalf of Illumina in the IPR
`challenge made by Intelligent Bio-Systems against
`Illumina; is that -- is that correct?
` A. Yeah, I believe so. But again, I'm only
`seeing the first page. But I think --
` Q. Sure.
` A. -- I believe that's correct.
` Q. Yeah. And if you turn to the last page,
`again, I'm just going to ask you to confirm that
`that's your signature?
` A. Yes, it is.
` Q. And the patent at issue, if we go to the
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`3/15/2021
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`Illumina Inc. v. The Trustees of Columbia University
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`Floyd Romesberg, Ph.D.
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`Page 14
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`front page, again, the patent at issue is
`Patent 7,566,537. That patent relates to SBS,
`correct?
` A. I don't have that patent in front of me.
`And I've -- I've read a lot of patents, and I don't
`remember their specific numbers.
` Q. Do you recall that when you were an
`expert for Illumina in this case that the patents at
`issue were Illumina SBS patents?
` A. I believe so.
` Q. And in this declaration, you were
`defending Illumina's SBS against invalidity
`challenges made by Intelligent Bio-Systems; is that
`correct?
` A. At the -- to the best of my recollection
`right now, I believe so.
` Q. And if you look at Paragraph 1 on
`page 2.
` MR. SCHWARTZ: If we can scroll there.
` Just as an aside, does Dr. Romesberg
` have access to be able to scroll through any
` part of the document that he would like to?
`
`www.DigitalEvidenceGroup.com
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`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 15
` THE VIDEOGRAPHER: So I just sent a link
` in the chat. If -- Doctor, if you click on
` that link, it will open up a folder with all
` the -- with exhibits that we have marked. So
` you can pull them -- you can view them from
` that -- from there.
`BY MR. SCHWARTZ:
` Q. I just want to give you an opportunity,
`Dr. Romesberg, to look at any part of this -- these
`documents. I'm not trying to restrict you to just a
`single page.
` A. Yes, thank you.
` Q. I'm not trying to trick you or anything
`like that. So I want you to have control to the
`extent you need it. You may not need it for my
`questions.
` Again, if you look at Paragraph 1 on
`page 2 of that declaration, the '53 Patent has a
`priority date of August 2002. Do you see that at
`the end?
` MR. ZIMMERMAN: Bob, I think you meant
` the '537 Patent.
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`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 16
` MR. SCHWARTZ: I did. I'm sorry if I
` said something else.
`BY MR. SCHWARTZ:
` Q. That has a priority date of August 2002.
`Your position is a person of ordinary skill in
`August 2002, correct?
` A. I'm sorry, you're asking about the '517?
` Q. The '537. This patent (indicating).
` A. I -- I'm sorry. I'm opening the file.
` Q. If you just look at Paragraph 1, it just
`says at the bottom --
` A. Yes, I'm sorry. I have the '537 -- I
`have the -- I have the appropriate dec open now.
` Q. Okay. And your opinions in this -- in
`this declaration were as of a person of ordinary
`skill as August 2002, correct?
` A. Yes, that is correct.
` Q. And please go to page 15 of this
`declaration. And please look at Paragraph 37. And
`in Paragraph 37, you write: (Reading)
` According to Tsien, the
` criteria for the successful use of
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 17
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` 3'-blocking groups include: One, the
` ability of a polymerase enzyme to
` accurately and efficiently incorporate
` the dNTPs carrying the 3'-blocking
` groups into the cDNA chain; two, the
` availability of mild conditions for
` rapid and quantitative deblocking; and
` three, the ability of a polymerase
` enzyme to reinitiate the cDNA
` synthesis subsequent to the deblocking
` stage.
` And you refer to Tsien. That's what you
`wrote, correct?
` A. Yes, it is.
` MR. SCHWARTZ: I'd like to put up Tsien
` as exhibit -- it's been marked previously as
` Exhibit 1031 in this case.
`BY MR. SCHWARTZ:
` Q. Is you -- do you have a hard copy of
`that in your binder, Doctor?
` A. I do. What -- I'm sorry, what is the
`exhibit number?
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 18
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` Q. 1031.
` Just so you have an opportunity to
`orient yourself.
` A. Yes, thank you.
` And, Bob, please feel free to call me
`Floyd.
` Q. I have great respect for doctors and
`professors and I will refer to you as Dr. Romesberg.
` A. Okay.
` I -- I have it now.
` Q. Okay. So I'm putting in front of you
`Exhibit 1031. This is the Tsien reference that you
`refer to in the declaration that we just looked at,
`Exhibit 2051, correct?
` A. Yes, that -- that is correct.
` Q. And please go to page 20 of Tsien.
` MR. SCHWARTZ: If we could maybe blow
` this up a little bit more.
`BY MR. SCHWARTZ:
` Q. But, of course, you do have a hard copy
`so you should be able to read it. I just want to
`look at the bottom of that -- of that page.
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 19
` On pages 20 and then if you carry over
`to the next page, 21, Tsien teaches the three
`requirements to successfully practice SBS that you
`refer to in Paragraph 37 of your declaration, right?
` MR. ZIMMERMAN: Object as to form.
` THE WITNESS: That is correct.
`BY MR. SCHWARTZ:
` Q. And as you can see in Number 1 of Tsien
`on page 20, Tsien requires efficient incorporation,
`correct?
` A. Tsien says accurately and efficiently.
` Q. And Tsien requires efficient
`incorporation because inefficient incorporation
`would result in unreliable sequencing due to the
`sequencing by synthesis system becoming out of
`phase; is that correct?
` A. After a number of cycles, yes.
` Q. And when the sequencing by synthesis
`system becomes out of phase, it's no longer capable
`of generating reliable sequencing information,
`right?
` A. When it's sufficiently out of phase,
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 20
`
`yes, it can no longer be read.
` Q. Okay. I would like to put in front of
`you Exhibit 2013. It's a document entitled, Video
`Deposition of Floyd Romesberg, Ph.D., July 8th,
`2014.
` (Exhibit Number 2013 was marked for identification.)
`BY MR. SCHWARTZ:
` Q. Please turn to page 75 of this exhibit.
`And starting --
` MR. SCHWARTZ: We can blow this up a
` little bit.
`BY MR. SCHWARTZ:
` Q. Starting at line 13, the transcript
`reads: (Reading)
` Question: So look at
` Requirement Number 2, The four
` nucleotide analogues need to be
` efficiently and faithfully
` incorporated by DNA polymerase as
` terminators in the polymerase
` reaction.
` You would agree with me that
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 21
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` in 2002, a person of ordinary skill
` would have to test a protecting group
` to determine whether, in fact, it
` meets that requirement.
` Answer: Yes, if it had not
` been tested in the literature and
` then -- correct, yes.
` That was your testimony, correct?
` A. That is what is written.
` Q. And it's your opinion that a POSA in
`2002 would have to test a protecting group to
`determine whether it is efficiently and faithfully
`incorporated by DNA polymerase if that protecting
`group had not been tested before; is that correct?
` A. So if you mean to in an absolute sense
`know that it was incorporated definitively, then,
`yeah, you have to run the experiment. We -- you're
`not asking about expectation of success, you're
`asking demonstration of suitability of efficient and
`high-fidelity incorporation, correct?
` Q. I'm asking you in relationship to your
`testimony that we just looked at in the transcript,
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 22
`your testimony was that the nucleotides need to be
`efficiently and faithfully incorporated by DNA
`polymerase as terminators in the polymerase
`reaction, and you opine that the -- that a person of
`ordinary skill would have to test those nucleotides
`to determine whether, in fact, it met that
`requirement of efficient and faithful incorporation
`by a DNA polymerase.
` Do you agree that a person would have to
`test that to determine whether it met those
`requirements?
` A. To absolutely determine, yes, that's
`what I was answering in this question.
` Q. And when you say a person of ordinary
`skill would have test a protecting group to
`determine whether it is efficiently and faithfully
`incorporated by a DNA polymerase as a terminator in
`the polymerase reaction, you mean that he or she
`would need to do an experiment and -- and test that
`in an experiment, correct?
` A. Well, again, it's not as simple as that.
`If you want to demonstrate in the end what you're
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 23
`going to have to, then, yeah, you need an experiment
`because that shows -- that's -- that's the
`demonstration.
` Q. I'm just asking you whether or not
`when -- in your testimony, when you're talking about
`testing, that a person of ordinary skill in 2002
`would need to do testing to determine whether or not
`the analogues were efficiently and faithfully
`incorporated by DNA polymerase, the testing you are
`referring to is experimental testing, correct?
` A. It is, yes.
` Q. Your opinion in -- in the testimony
`we're just looking at is in relation to the person
`of ordinary skill in 2002. Your opinion wouldn't
`change for a person of ordinary skill in 2000,
`correct?
` A. That is correct.
` Q. Would a person of ordinary skill in 2000
`view testing a protecting group to determine if it
`is incorporated by a DNA polymerase to be a routine
`experiment?
` A. I guess it depends on what you mean by
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 24
`"routine." Certainly, the protocols were known.
`The -- they certainly would have taken optimization.
`You would have had to have the analogue. But, yeah,
`they were known in the literature.
` MR. SCHWARTZ: I'd like to mark another
` exhibit, please. I'm going to mark a chart
` that I made. I'm going to mark Exhibit 2053.
` (Exhibit Number 2053 was marked for identification.)
` MR. SCHWARTZ: If we could get that up
` on the screen.
` THE VIDEOGRAPHER: I'm sorry, I'm not --
` I'm not seeing that one, 2053.
` MR. GARRETT: Tab 7.
` THE VIDEOGRAPHER: Tab 7. That's
` bizarre, for some reason, I don't have a
` Tab -- oh, okay, I see, it's a native file.
` My apologies.
`BY MR. SCHWARTZ:
` Q. Dr. Romesberg, I'm putting in front of
`you a chart that I made.
` MR. SCHWARTZ: And court reporter,
` please, mark this as Exhibit 2053.
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 25
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`BY MR. SCHWARTZ:
` Q. Dr. Romesberg, this chart lists
`different 3'-O capping groups along the top and
`different DNA polymerases along the left side. I am
`going to ask you as to go down each column with me
`on -- on the Zoom call here. And if a person of
`ordinary skill in October 2000 would have expected
`that the enzyme would incorporate the capping group
`in that column, I'd like to mark a plus sign. If
`there was no expectation that it would incorporate
`it, I'd like to mark a minus sign. And if you're
`not sure whether it would incorporate -- whether a
`POSA would understand it would incorporate as of
`October of 2000, I'd like to put a question mark.
` So can we just -- I'm not sure how we do
`this remotely. Is there a way to mark this up? But
`can you -- you know, maybe we can just go down in
`the -- in the first column where there's a CH3,
`would a person of ordinary skill in October 2000
`expect that that 3'-O CH3 capping group would be
`incorporated by Sequenase?
` MR. ZIMMERMAN: Object as to form.
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 26
` THE WITNESS: So I have not thought
` about these specific examples, nor was I asked
` to. But I'm happy to speculate about them
` now. But I'm not sure that I would be as
` accurate as a POSA thinking about sequencing
` by synthesis at this moment because I haven't
` thought about -- about these. And there's a
` lot of enzymes there. But I'm happy to
` speculate just on my general intuition. If
` that's okay, Bill (sic).
`BY MR. SCHWARTZ:
` Q. Well, I'm not asking you to speculate.
`I'm just asking you whether or not -- if you
`would -- if it's your opinion that a POSA would have
`an expectation that those capping groups would be
`incorporated, we'll put a plus. If you have an
`expectation that they would not be incorporated,
`we'll put a minus. And if you're not sure, we'll
`put a question mark. So if you say, I speculate,
`we'll put a question mark; is that fair?
` A. The caveat that I'm -- that I'm
`mentioning is that a POSA would be very familiar
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 27
`with the literature of the time. I was not asked to
`look at that literature, so my -- my recollections
`and scope will be more speculation and intuition. A
`POSA would have had a greater familiarity with the
`literature of the time than I do right now because,
`as I mentioned, I was not asked to look at this
`literature. Is that clear?
` Q. Well, let -- let's go over to the -- all
`the way to -- second-to-the-right. The column there
`is a MOM. Do you see that?
` A. I do.
` Q. Okay. And your declaration, you take
`many positions on MOM incorporation into DNA
`polymerases as of October 2000, correct?
` A. I do.
` Q. So you wouldn't have to speculate in
`that column, would you?
` A. It would be less speculation because I
`have thought about it more.
` Q. Okay. So let's start with the MOM
`column. Would you expect the MOM to be incorporated
`by sequencing a Sequenase -- would a -- let me
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`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2020
`
`202-232-0646
`
`

`

`3/15/2021
`
`Illumina Inc. v. The Trustees of Columbia University
`
`Floyd Romesberg, Ph.D.
`
`Page 28
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`strike that.
` Would a person of ordinary skill in
`October 2000 have an expectation that the MOM
`capping group, and again, these are the 3'-O capping
`groups, would they have an expectation, he or she
`have an expectation, that

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