Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` INTELLIGENT BIO-SYSTEMS,
`
` INC.
`
` Petitioner,
`
` - vs - No. IPR2013-00517
` U.S. PATENT 7,566,537
` ILLUMINA CAMBRIDGE LTD
`
` Patent Owner.
` ____________________________
`
` VIDEO DEPOSITION OF FLOYD ROMESBERG, Ph.D.
`
` July 8, 2014
`
` Reported by: LYNN PENFIELD, CSR No. 8589, RPR, CRR
`
`KRAMM COURT REPORTING
`
`Page: 1
`
`Columbia Ex. 2013
`Illumina, Inc. v. The Trustees
`of Columbia University
`in the City of New York
`IPR2020-01177
`
`
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` INTELLIGENT BIO-SYSTEMS,
`
` INC.
`
` Petitioner,
`
` - vs - No. IPR2013-00517
` U.S. PATENT 7,566,537
` ILLUMINA CAMBRIDGE LTD
`
` Patent Owner.
` ____________________________
`
` VIDEO DEPOSITION OF FLOYD ROMESBERG, Ph.D.
`
` July 8, 2014
`
` Reported by: LYNN PENFIELD, CSR No. 8589, RPR, CRR
`
`KRAMM COURT REPORTING
`
`Page: 1
`
`Columbia Ex. 2013
`Illumina, Inc. v. The Trustees
`of Columbia University
`in the City of New York
`IPR2020-01177
`
`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 1 I N D E X
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` 2
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` 3 THE WITNESS: EXAMINATION
`
` 4 FLOYD ROMESBERG, Ph.D.
`
` 5 BY MR. SEGAL 9
` BY MS. SWAROOP 170
`
` 6
`
` 7 QUESTIONS NOT ANSWERED
`
` 8 PAGE LINE
`
` 9 Did you ask your attorneys for other 159 2
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`10 data with regard to the cleavage of
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`11 allyl protecting groups?
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`12
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`13 E X H I B I T S
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`14 DEPOSITION EXHIBIT: PAGE
`
`15 Exhibit 1018 A 2-page copy of a document 111
`
`16 entitled, "A Mild and Rapid
`
`17 Regeneration of Alcohols from
`
`18 their Allylic Ethers by
`
`19 Chlorotrimethylsilane/Sodium
`
`20 Iodide" by Ahmed Kamal and
`
`21 others
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`22
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 1 Exhibit 1019 A 14-page copy of a document 112
`
` 2 entitled, "Approach to the Total
`
` 3 Synthesis of Chlorothricolide:
`
` 4 Synthesis of (+-)-19,20-Dihydro-
`
` 5 24-O-methylchlorothricolide,
`
` 6 Methyl Ester, Ethyl Carbonate"
`
` 7 by Robert E. Ireland and
`
` 8 Michael D. Varney
`
` 9 Exhibit 1020 A 2-page copy of a document 170
`
`10 entitled, "Abstracts,
`
`11 Biophysical Society, Sixth
`
`12 Annual Meeting"
`
`13
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`14
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`15
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`16
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`17
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 1 EXHIBITS REFERRED TO: PAGE
`
` 2 1001 21
`
` 3 1002 51
`
` 4 1004 112
`
` 5 1008 99
`
` 6 1106 119
`
` 7 2011 13
`
` 8 2013 138
`
` 9 2014 140
`
`10 2015 141
`
`11 2016 143
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`12 2018 147
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`13 2019 81
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`14 2021 150
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`15
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`16 CONFIDENTIAL SECTION BEGINS ENDS
`
`17 No. 1 164 168
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`18
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 1 APPEARANCES
`
` 2
`
` 3 FOR THE PETITIONER:
`
` 4 BALLARD SPAHR LLP
`
` 5 BY: MARC S. SEGAL, ESQ.
`
` 6 1735 Market Street, 51st Floor
`
` 7 Philadelphia, Pennsylvania 19103-7599
`
` 8 215-665-8500
`
` 9 segalm@ballardspahr.com
`
`10 AND
`
`11 BALLARD SPAHR, LLP
`
`12 BY: SCOTT D. MARTY, Ph.D., ESQ.
`
`13 999 Peachtree Street, Suite 1000
`
`14 Atlanta, Georgia 30309-3915
`
`15 678-420-9300
`
`16 martys@ballardspahr.com
`
`17 FOR THE PATENT OWNER ILLUMINA CAMBRIDGE LTD.:
`
`18 KNOBBE MARTENS OLSON & BEAR LLP
`
`19 BY: SHEILA SWAROOP, ESQ.
`
`20 2040 Main Street, 14th Floor
`
`21 Irvine, California 92614
`
`22 949-760-0404; FAX 949-760-9502
`
`23 sheila.swaroop@kmob.com
`
`24 AND
`
`25 ///
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`KRAMM COURT REPORTING
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 1 KNOBBE MARTENS OLSON & BEAR LLP
`
` 2 BY: NATHANAEL R. LUMAN, Ph.D., J.D., ESQ.
`
` 3 KERRY S. TAYLOR, Ph.D., ESQ.
`
` 4 12790 El Camino Real, Suite 100
`
` 5 San Diego, California 92130
`
` 6 858-707-4000; FAX 858-707-4001
`
` 7 Nate.Luman@knobbe.com
`
` 8 kerry.taylor@knobbe.com
`
` 9 AND
`
`10 ILLUMINA, INC.
`
`11 BY: MARCUS BURCH, ESQ.
`
`12 5200 Illumina Way
`
`13 San Diego, California 92122
`
`14 224-643-7473
`
`15 mburch@illumina.com
`
`16 VIDEO RECORDING PROVIDED BY:
`
`17 JORDAN MEDIA, INC.
`
`18 BY: JON IMEL
`
`19 1228 Madison Avenue
`
`20 San Diego, California 92116
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`21 619-299-4050
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`22
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 1 VIDEO DEPOSITION OF FLOYD ROMESBERG, PH.D.
`
` 2 taken by Petitioner at 12790 El Camino Real, Suite 100,
`
` 3 San Diego, California 92130, commencing on Tuesday,
`
` 4 July 8, 2014, at 9:02 a.m. before Lynn Penfield,
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` 5 Certified Shorthand Reporter, Registered Professional
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` 6 Reporter, Certified Realtime Reporter.
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`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 12:35:37 1 San Diego, California July 8, 2014 9:18 a.m.
`
` 08:42:13 2 THE VIDEO OPERATOR: Good morning. We are on
`
` 09:18:12 3 the record. This is the digital video deposition of
`
` 09:18:15 4 Floyd Romesberg, Ph.D., testifying in the matter of
`
` 09:18:20 5 Intelligent Bio-Systems, Inc., versus Illumina
`
` 09:18:24 6 Cambridge, case number IPR2013-00517.
`
` 09:18:31 7 Today we are located at 12790 El Camino Real,
`
` 09:18:35 8 San Diego, California. Today's date is July 8th, 2014.
`
` 09:18:39 9 The time on the video monitor is 9:18 a.m.
`
` 09:18:43 10 My name is Jon Imel, video specialist with
`
` 09:18:46 11 Jordan Media, Inc., located at 1228 Madison Avenue,
`
` 09:18:51 12 San Diego, California. The certified shorthand reporter
`
` 09:18:55 13 today is Lynn Penfield in association with Kramm Court
`
` 09:19:00 14 Reporting, located in San Diego, California.
`
` 09:19:02 15 Will counsel please introduce yourselves for
`
` 09:19:04 16 the record.
`
` 09:19:05 17 MR. SEGAL: Mark Segal, Ballard Spahr, for
`
` 09:19:09 18 Intelligent Bio-Systems; and with me is Scott Marty,
`
` 09:19:14 19 also from Ballard Spahr for Intelligent Bio-Systems.
`
` 09:19:18 20 MS. SWAROOP: Sheila Swaroop, Knobbe Martens
`
` 09:19:20 21 Olson & Bear, for Illumina. Also with me from Knobbe
`
` 09:19:24 22 Marten is Nate Luman, and also attending is a
`
` 09:19:28 23 representative from Illumina, Marcus Burch.
`
` 09:19:31 24 THE VIDEO OPERATOR: The reporter may swear in
`
` 09:19:31 25 the witness.
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`KRAMM COURT REPORTING
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`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:19:33 1 FLOYD ROMESBERG, Ph.D.,
`
` 09:19:33 2 having been first duly sworn, testified as follows:
`
` 09:19:33 3
`
` 09:19:33 4 EXAMINATION
`
` 09:19:41 5 BY MR. SEGAL:
`
` 09:19:42 6 Q. Good morning, Dr. Romesberg.
`
` 09:19:44 7 A. Good morning.
`
` 09:19:45 8 Q. Could you please state your full name and
`
` 09:19:47 9 address for the record.
`
` 09:19:47 10 A. I'm Floyd Romesberg, 8109 Camino del Sur -- del
`
` 09:19:53 11 Sol, La Jolla, California.
`
` 09:19:55 12 Q. Okay. I know you've been deposed a few times
`
` 09:19:59 13 before in these IPR proceedings, but I just want to go
`
` 09:20:02 14 through some ground rules for this deposition.
`
` 09:20:05 15 Is that okay?
`
` 09:20:05 16 A. It is.
`
` 09:20:08 17 Q. Do you understand that today you're under oath?
`
` 09:20:10 18 A. I do.
`
` 09:20:11 19 Q. By that, do you understand that you are sworn
`
` 09:20:13 20 to tell the truth?
`
` 09:20:15 21 A. I do.
`
` 09:20:16 22 Q. Do you also understand that even though we're
`
` 09:20:19 23 not in front of a Court or in front of a jury, your
`
` 09:20:22 24 answers today have the same force and effect as if we
`
` 09:20:27 25 were in a courtroom with a judge and jury?
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`KRAMM COURT REPORTING
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`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:20:29 1 A. I understand.
`
` 09:20:30 2 Q. Are you prepared to answer my questions today?
`
` 09:20:32 3 A. I am.
`
` 09:20:33 4 Q. Is there anything that will prevent you from
`
` 09:20:35 5 giving me your full attention today?
`
` 09:20:38 6 A. There is not.
`
` 09:20:39 7 Q. Are you taking any medications or suffering
`
` 09:20:42 8 from any illness that would prevent you from
`
` 09:20:45 9 understanding my questions and answering them fully?
`
` 09:20:48 10 A. I am currently taking a medication, but it
`
` 09:20:50 11 would not prevent me from answering your questions
`
` 09:20:53 12 fully.
`
` 09:20:55 13 Q. Okay. So throughout the day -- you've gone
`
` 09:20:57 14 through this process before -- I'm going to ask you some
`
` 09:21:00 15 questions, and if you don't understand my question,
`
` 09:21:03 16 please ask me to clarify.
`
` 09:21:05 17 Is that okay?
`
` 09:21:06 18 A. That is okay.
`
` 09:21:08 19 Q. Now, if you don't ask me to clarify the
`
` 09:21:11 20 question, can we assume that you've understood the
`
` 09:21:14 21 question?
`
` 09:21:15 22 A. Yes.
`
` 09:21:18 23 Q. Also, throughout the day, your attorney may
`
` 09:21:22 24 interpose some objections. Now, unless you are
`
` 09:21:26 25 instructed by counsel not to answer, please go ahead and
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`KRAMM COURT REPORTING
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 09:21:29 1 answer the question.
`
` 09:21:30 2 Understand?
`
` 09:21:31 3 A. I do.
`
` 09:21:33 4 Q. As you know, we have a court reporter recording
`
` 09:21:35 5 my questions and your answers today, so throughout the
`
` 09:21:39 6 day, we want to try to make things easier on her, and so
`
` 09:21:43 7 you need to make sure you give oral responses to my
`
` 09:21:46 8 questions.
`
` 09:21:47 9 Understood?
`
` 09:21:48 10 A. Yes.
`
` 09:21:48 11 Q. And we should also try not to speak over each
`
` 09:21:50 12 other, so please let me finish my question before you
`
` 09:21:54 13 start answering, and I will try to let you finish your
`
` 09:21:58 14 answer before I ask my next question.
`
` 09:22:00 15 Understood?
`
` 09:22:01 16 A. Yes.
`
` 09:22:05 17 Q. Okay. I'm going to take -- also take regular
`
` 09:22:07 18 breaks during the day, but if at any time you need a
`
` 09:22:11 19 break for anything, please ask me and we can take a
`
` 09:22:14 20 break.
`
` 09:22:15 21 Understood?
`
` 09:22:16 22 A. Yes.
`
` 09:22:19 23 Q. Now, have you been deposed since your last
`
` 09:22:22 24 deposition in these IPR proceedings?
`
` 09:22:26 25 A. No, I have not.
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 09:22:28 1 Q. Now, you previously testified that you were
`
` 09:22:30 2 serving as an expert for Roche in a case against Enzo.
`
` 09:22:35 3 Is that correct?
`
` 09:22:36 4 A. I believe it's a case of Enzo against Roche.
`
` 09:22:40 5 Q. Okay. But you are serving as an expert in that
`
` 09:22:42 6 matter?
`
` 09:22:43 7 A. Yeah, but there's -- as I think I mentioned
`
` 09:22:46 8 then, there's been zero activity on that and there
`
` 09:22:49 9 hasn't been any activity since then.
`
` 09:22:51 10 Q. Okay. Just so I understand, there's no
`
` 09:22:53 11 activity since your last deposition?
`
` 09:22:55 12 A. Correct.
`
` 09:22:56 13 Q. Okay. So you haven't filed a declaration in
`
` 09:22:59 14 that matter?
`
` 09:22:59 15 A. No, I have not.
`
` 09:23:00 16 Q. Okay. You haven't been deposed?
`
` 09:23:03 17 A. No.
`
` 09:23:06 18 Q. Have you been engaged as an expert in any other
`
` 09:23:09 19 matter since your last deposition?
`
` 09:23:11 20 A. No.
`
` 09:23:13 21 Q. Okay. How much time have you spent on this IPR
`
` 09:23:17 22 proceeding to date?
`
` 09:23:21 23 A. This IPR?
`
` 09:23:23 24 Q. Yes.
`
` 09:23:29 25 A. I -- again, I -- I always have problems
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 09:23:33 1 figuring this out. I should have known you'd ask me
`
` 09:23:36 2 this, so I should have figured it out.
`
` 09:23:39 3 35 hours, 40 hours, I would -- maybe 50 hours
`
` 09:23:44 4 including reading, talking to counsel.
`
` 09:23:50 5 Q. Okay. Does that include your preparation for
`
` 09:23:53 6 the deposition today?
`
` 09:23:54 7 A. Yeah.
`
` 09:23:56 8 Q. Okay.
`
` 09:23:57 9 A. That's a rough estimate.
`
` 09:24:05 10 MR. SEGAL: His declaration?
`
` 09:24:35 11 I'm going to show you what's been previously
`
` 09:24:38 12 marked as Exhibit 2011.
`
` 09:24:42 13 (Exhibit 2011 was referred to.)
`
` 09:24:47 14 MS. SWAROOP: Counsel, before you start, I just
`
` 09:24:49 15 want to note that portions of his declaration have been
`
` 09:24:52 16 designated as confidential, so to the extent you get
`
` 09:24:55 17 into that portion of the declaration, we'll just need to
`
` 09:24:57 18 go on the confidential portion of the record.
`
` 09:25:01 19 MR. SEGAL: Okay.
`
` 09:25:01 20 BY MR. SEGAL:
`
` 09:25:02 21 Q. Do you recognize this document?
`
` 09:25:03 22 A. Yes. It would appear to be my declaration.
`
` 09:25:05 23 Q. And it's your declaration in this matter, this
`
` 09:25:08 24 proceeding?
`
` 09:25:10 25 A. Yes, it would appear to be.
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 09:25:16 1 Q. If you'll turn to the last page, page 43, is
`
` 09:25:23 2 that your signature there?
`
` 09:25:24 3 A. It is.
`
` 09:25:26 4 Q. And you signed it on May 5th of this year?
`
` 09:25:30 5 A. Yes.
`
` 09:25:34 6 Q. Did you draft this declaration?
`
` 09:25:36 7 A. I participated in it. I read carefully all
`
` 09:25:41 8 aspects, every part of it, and worked with it, but I did
`
` 09:25:49 9 not actually write it. It was written by my lawyers at
`
` 09:25:54 10 Knobbe Martens.
`
` 09:25:57 11 Q. Did you make any changes after they wrote the
`
` 09:26:00 12 declaration?
`
` 09:26:00 13 A. Pretty extensively, all through discussion.
`
` 09:26:06 14 Q. Was anyone other than your attorneys at Knobbe
`
` 09:26:10 15 involved in drafting your declaration?
`
` 09:26:13 16 A. No.
`
` 09:26:15 17 Q. Are you aware that there is a -- another expert
`
` 09:26:19 18 that's testifying on behalf of Illumina in this matter?
`
` 09:26:24 19 A. Vaguely.
`
` 09:26:25 20 Q. Did you speak with this expert?
`
` 09:26:27 21 A. Did I speak with him? No, I did not, verbally.
`
` 09:26:32 22 Ironically, I sent him an e-mail. It was
`
` 09:26:36 23 unintentional. At the time I didn't know he was an
`
` 09:26:38 24 expert and it was on an unrelated thing, and he sent me
`
` 09:26:42 25 an e-mail back, and that was the extent of it.
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 09:26:45 1 Q. All right. Who was this expert?
`
` 09:26:49 2 A. Metzker.
`
` 09:26:50 3 Q. Metzker?
`
` 09:26:51 4 A. Oh, God. This is how informal it was.
`
` 09:26:56 5 Q. Is it Dr. Burgess?
`
` 09:26:58 6 A. Yes, I'm sorry. No -- yes, it was Dr. Burgess.
`
` 09:27:02 7 Q. Okay.
`
` 09:27:03 8 A. Thank you.
`
` 09:27:03 9 Q. So you didn't speak to him regarding this
`
` 09:27:05 10 matter?
`
` 09:27:05 11 A. No.
`
` 09:27:06 12 Q. Okay. You sent him an e-mail recently?
`
` 09:27:10 13 A. Maybe it was three -- two months ago.
`
` 09:27:12 14 Q. And that was regarding?
`
` 09:27:14 15 A. It was regarding some -- my lab works with the
`
` 09:27:21 16 evolution of DNA polymerases and on a -- with a -- to
`
` 09:27:27 17 recognize unnatural substrates, and we -- I had a
`
` 09:27:31 18 question about an unnatural substrate that would have
`
` 09:27:35 19 nothing to do with sequencing by synthesis, and I just
`
` 09:27:40 20 wondered if he knew of anyone who had characterized it,
`
` 09:27:44 21 and he sent me back an e-mail that said no.
`
` 09:27:50 22 Q. Can you turn to page 6 of your declaration.
`
` 09:28:04 23 You'll see in paragraph 21 you list some
`
` 09:28:08 24 documents that you've considered and reviewed in
`
` 09:28:12 25 connection with providing this declaration.
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`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
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` 09:28:14 1 Is that right?
`
` 09:28:15 2 A. That is right.
`
` 09:28:17 3 Q. Are these the only materials you relied on in
`
` 09:28:20 4 forming your opinion in your declaration?
`
` 09:28:24 5 A. No. There were a couple other papers that I
`
` 09:28:28 6 read that I believe are not listed.
`
` 09:28:33 7 Q. And what are those papers?
`
` 09:28:35 8 A. I don't have them.
`
` 09:28:37 9 Q. Can you tell me --
`
` 09:28:38 10 A. Oh, what were they?
`
` 09:28:42 11 Q. Yes.
`
` 09:28:42 12 A. I thought you said where.
`
` 09:28:44 13 They were a paper by an author named Reardon
`
` 09:28:47 14 and a paper by an author named Handlon, and they were
`
` 09:28:52 15 provided to me by my lawyers.
`
` 09:29:02 16 Q. Do you know the date of these papers?
`
` 09:29:05 17 A. I can estimate. I did look at them. I've read
`
` 09:29:08 18 a lot of papers recently on this IPR. I think they
`
` 09:29:12 19 were -- I believe the Handlon paper I'm thinking was
`
` 09:29:18 20 1988, and I think the Reardon paper was 1992,
`
` 09:29:21 21 approximately.
`
` 09:29:26 22 Q. Now, why didn't you list those papers in
`
` 09:29:28 23 paragraph 21?
`
` 09:29:29 24 A. Because I only saw them for the first time last
`
` 09:29:38 25 week.
`
`KRAMM COURT REPORTING
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`Page: 16
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`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:29:38 1 So maybe I should clarify my answer. I did not
`
` 09:29:41 2 use them for writing this declaration. I used them -- I
`
` 09:29:44 3 read them in preparation for this IPR, for this
`
` 09:29:47 4 deposition.
`
` 09:29:49 5 Q. Okay. So are there any references that aren't
`
` 09:29:53 6 listed or material that is not listed in paragraph 21
`
` 09:29:56 7 that you relied on in rendering your opinions in the
`
` 09:30:00 8 declaration?
`
` 09:30:01 9 A. No.
`
` 09:30:05 10 I must have misunderstood your question. I'm
`
` 09:30:08 11 sorry.
`
` 09:30:08 12 Q. Who identified the documents and material
`
` 09:30:11 13 listed in paragraph 21?
`
` 09:30:13 14 A. Most of them, my lawyers. The -- there were
`
` 09:30:17 15 several specifically related to an aspect of -- that's
`
` 09:30:21 16 important to the IPR, specifically conditions that
`
` 09:30:24 17 denature DNA that I spent a particularly long time
`
` 09:30:30 18 looking at, looking for; and I think that none of them
`
` 09:30:33 19 wound up being as key as the ones are here, so they're
`
` 09:30:36 20 not listed.
`
` 09:30:37 21 And so they were not -- they were simply read,
`
` 09:30:39 22 but they didn't wind up being as relevant, so I didn't
`
` 09:30:43 23 use them and so I think that none of them wound up being
`
` 09:30:47 24 here.
`
` 09:30:48 25 So I think that in the end, I think all of them
`
`KRAMM COURT REPORTING
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`Page: 17
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`
`
`Deposition of Floyd Romesberg, Ph.D.
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`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:30:50 1 here, I believe, were provided by my lawyers.
`
` 09:30:58 2 Q. So you mentioned some documents that you found
`
` 09:31:00 3 regarding denaturation.
`
` 09:31:02 4 Is that right?
`
` 09:31:03 5 A. Correct.
`
` 09:31:04 6 Q. And those are not listed here?
`
` 09:31:06 7 A. They are not.
`
` 09:31:09 8 Q. Do any of those documents contradict your
`
` 09:31:13 9 opinions in your --
`
` 09:31:15 10 A. No.
`
` 09:31:15 11 Q. -- declaration?
`
` 09:31:17 12 A. No, absolutely not.
`
` 09:31:18 13 Q. Do you remember the -- the first named
`
` 09:31:21 14 authors --
`
` 09:31:22 15 A. No.
`
` 09:31:22 16 Q. -- or the titles of these documents?
`
` 09:31:24 17 A. No. I apologize. I do not. But they did not
`
` 09:31:28 18 contradict in any way. They were the -- the -- the
`
` 09:31:33 19 important point was absolutely the same in all of them.
`
` 09:31:37 20 Q. Were these references provided to your
`
` 09:31:39 21 attorneys?
`
` 09:31:42 22 A. I -- I discussed it with them. I don't know --
`
` 09:31:45 23 I don't remember if I actually provided them.
`
` 09:31:59 24 Q. Now, you mentioned the Reardon and Handlon
`
` 09:32:01 25 references that you reviewed in preparation for this
`
`KRAMM COURT REPORTING
`
`Page: 18
`
`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:32:04 1 deposition.
`
` 09:32:05 2 Is that right?
`
` 09:32:05 3 A. It is.
`
` 09:32:08 4 Q. Did your review of the Reardon and Handlon
`
` 09:32:11 5 references in any way change your opinions --
`
` 09:32:16 6 A. No.
`
` 09:32:16 7 Q. -- that are in your declaration?
`
` 09:32:18 8 A. No, it did not.
`
` 09:32:29 9 Q. Were there any documents that you located
`
` 09:32:31 10 through your own search that you were told not to
`
` 09:32:34 11 consider in rendering your opinions?
`
` 09:32:36 12 A. No. In fact, my lawyers were very clear --
`
` 09:32:44 13 MS. SWAROOP: Dr. Romesberg, I would caution
`
` 09:32:45 14 you not to disclose communications with counsel. Those
`
` 09:32:48 15 are subject to privilege.
`
` 09:32:49 16 So answer that to the extent you can without
`
` 09:32:52 17 disclosing privileged communications.
`
` 09:32:54 18 THE WITNESS: No. They -- no, there were none
`
` 09:32:56 19 that I was told not to use.
`
` 09:33:09 20 BY MR. SEGAL:
`
` 09:33:09 21 Q. What did you do to prepare for today's
`
` 09:33:11 22 deposition?
`
` 09:33:12 23 MS. SWAROOP: Again, Dr. Romesberg, exclude
`
` 09:33:15 24 from your answer any specific reference to any specific
`
` 09:33:16 25 communications with counsel. You can testify generally
`
`KRAMM COURT REPORTING
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`Page: 19
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`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:33:18 1 as to what you did to prepare.
`
` 09:33:20 2 THE WITNESS: I met with the lawyers and I read
`
` 09:33:23 3 papers and patents, the material described in paragraph
`
` 09:33:29 4 21 of my declaration.
`
` 09:33:31 5 BY MR. SEGAL:
`
` 09:33:31 6 Q. When did you meet with your lawyers?
`
` 09:33:37 7 A. Most recently, and the only dates that I can
`
` 09:33:40 8 explicitly remember are, I believe, Wednesday and
`
` 09:33:47 9 Thursday of last week -- two days last week, I believe
`
` 09:33:51 10 it was Wednesday and Thursday -- yesterday -- and
`
` 09:33:54 11 yesterday, and also one time earlier, maybe a month ago.
`
` 09:34:05 12 I came into the -- to this room and we --
`
` 09:34:09 13 that's when we went through the -- the declaration
`
` 09:34:12 14 paragraph by paragraph.
`
` 09:34:18 15 Q. How long did you meet with your attorney last
`
` 09:34:20 16 week? Were they all-day meetings?
`
` 09:34:23 17 A. Yes, both days were all-day meetings, I think
`
` 09:34:27 18 seven to eight hours.
`
` 09:34:29 19 All day doing academic -- "all day" to me can
`
` 09:34:33 20 mean longer than that.
`
` 09:34:35 21 Q. How about yesterday? Was that an all-day
`
` 09:34:38 22 meeting?
`
` 09:34:39 23 A. No, it was not. I think we were done at 2:00.
`
` 09:34:49 24 Q. Did you discuss your deposition preparation
`
` 09:34:52 25 with anyone other than your attorneys?
`
`KRAMM COURT REPORTING
`
`Page: 20
`
`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:34:54 1 A. No.
`
` 09:35:24 2 MR. SEGAL: Dr. Romesberg, I'm going to hand
`
` 09:35:26 3 you what's been previously marked Exhibit 1001. It's
`
` 09:35:30 4 U.S. patent No. 7,566,537.
`
` 09:35:36 5 (Exhibit 1001 was referred to.)
`
` 09:35:49 6 BY MR. SEGAL:
`
` 09:35:50 7 Q. Have you seen this patent before?
`
` 09:35:51 8 A. Yes, I have. It would appear to be the
`
` 09:35:53 9 Illumina patent that is the subject of this IPR.
`
` 09:35:56 10 Q. Have you reviewed this patent?
`
` 09:35:58 11 A. Yes.
`
` 09:35:59 12 Q. Have you reviewed the claims of this patent?
`
` 09:36:01 13 A. Yes, I have.
`
` 09:36:09 14 Q. Have you reviewed the file history for this
`
` 09:36:11 15 patent?
`
` 09:36:12 16 A. That's a specific document, correct?
`
` 09:36:16 17 Q. By "file history," I mean the -- the documents
`
` 09:36:20 18 that are exchanged between the patent applicant and the
`
` 09:36:23 19 U.S. Patent and Trademark Office to obtain the patent.
`
` 09:36:28 20 Did you review that file?
`
` 09:36:31 21 A. I -- I'm not sure. I vaguely remember maybe
`
` 09:36:36 22 seeing it, but I might be mixing this up with a
`
` 09:36:40 23 different IPR that was very long, and I don't think I
`
` 09:36:42 24 read it. If it was provided to me, I didn't digest it
`
` 09:36:47 25 and retain it.
`
`KRAMM COURT REPORTING
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`Page: 21
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`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:36:51 1 Q. Do you know what claims are at issue in this
`
` 09:36:54 2 IPR proceeding?
`
` 09:37:01 3 A. I don't understand the question.
`
` 09:37:02 4 Q. Do you know what patent claims are at issue in
`
` 09:37:06 5 this proceeding?
`
` 09:37:08 6 A. So specifically I assumed that all of them were
`
` 09:37:12 7 at issue. I guess I'm -- I guess, then, the answer to
`
` 09:37:15 8 your question would be no.
`
` 09:37:26 9 Q. If you could take a look at claim 1. It's in
`
` 09:37:35 10 column 19.
`
` 09:37:39 11 Are you there?
`
` 09:37:40 12 A. I see it.
`
` 09:37:41 13 Q. Claim 1 reads at the very beginning, "A method
`
` 09:37:43 14 of labeling a nucleic acid molecule."
`
` 09:37:47 15 Did I read that correctly?
`
` 09:37:50 16 A. You did.
`
` 09:37:50 17 Q. How would a person of ordinary skill in the art
`
` 09:37:53 18 as of August 2002 understand a method of labeling in the
`
` 09:37:57 19 context of this claim?
`
` 09:37:58 20 MS. SWAROOP: Object as outside the scope of
`
` 09:38:01 21 his declaration.
`
` 09:38:02 22 BY MR. SEGAL:
`
` 09:38:03 23 Q. You can answer.
`
` 09:38:04 24 A. I assume a person skilled in the art would
`
` 09:38:06 25 interpret it exactly as it says: That it was a method
`
`KRAMM COURT REPORTING
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`Page: 22
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`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:38:10 1 of having, producing, or using nucleotides that are
`
` 09:38:19 2 modified or labeled in some way that's useful.
`
` 09:38:23 3 Q. Now, a method of labeling is different than a
`
` 09:38:26 4 method of sequencing, correct?
`
` 09:38:28 5 MS. SWAROOP: Again, object as outside the
`
` 09:38:29 6 scope.
`
` 09:38:32 7 THE WITNESS: A method of labeling is different
`
` 09:38:35 8 than a method of its use; for example, for sequencing,
`
` 09:38:38 9 yeah.
`
` 09:38:40 10 BY MR. SEGAL:
`
` 09:38:43 11 Q. The next part of the claim, if you'll read with
`
` 09:38:45 12 me, states "the method comprising incorporating into the
`
` 09:38:51 13 nucleic acid molecule a nucleotide or nucleoside
`
` 09:38:56 14 molecule."
`
` 09:38:56 15 Did I read that portion correctly?
`
` 09:39:00 16 A. Yes.
`
` 09:39:02 17 Q. In the context of this claim, what would
`
` 09:39:04 18 "incorporating" mean to a person of ordinary skill in
`
` 09:39:08 19 the art as of August 2002?
`
` 09:39:11 20 MS. SWAROOP: Okay. I'm going to object as
`
` 09:39:13 21 outside the scope of Dr. Romesberg's declaration.
`
` 09:39:18 22 THE WITNESS: Are you asking --
`
` 09:39:19 23 MS. SWAROOP: The subject of -- the subject of
`
` 09:39:20 24 claim construction was not part of his opinions in this
`
` 09:39:23 25 case.
`
`KRAMM COURT REPORTING
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`Page: 23
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`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:39:23 1 MR. SEGAL: He's giving an opinion as to the
`
` 09:39:25 2 validity of the claims. He has to understand what they
`
` 09:39:28 3 mean to a person of ordinary skill in the art.
`
` 09:39:30 4 MS. SWAROOP: Well, I object to the extent
`
` 09:39:31 5 you're asking him to construe the claims. It's outside
`
` 09:39:36 6 the scope of his declaration.
`
` 09:39:37 7 MR. SEGAL: Your objection is noted.
`
` 09:39:39 8 THE WITNESS: So to clarify, you're asking if
`
` 09:39:42 9 one was given that sentence in a vacuum with no other
`
` 09:39:45 10 information, how would they interpret it?
`
` 09:39:47 11 BY MR. SEGAL:
`
` 09:39:48 12 Q. How would a person interpret that phrase that I
`
` 09:39:50 13 just read to you in the context of this patent?
`
` 09:39:54 14 If they're picking up this patent in August of
`
` 09:39:56 15 2002, how would they understand that incorporation
`
` 09:40:02 16 phrase --
`
` 09:40:02 17 MS. SWAROOP: Same objection.
`
` 09:40:03 18 BY MR. SEGAL:
`
` 09:40:04 19 Q. -- to mean?
`
` 09:40:05 20 MS. SWAROOP: Same objection. Calls for a
`
` 09:40:06 21 legal conclusion, outside the scope.
`
` 09:40:08 22 THE WITNESS: I should answer?
`
` 09:40:10 23 MS. SWAROOP: You can answer to the extent you
`
` 09:40:11 24 can.
`
` 09:40:13 25 THE WITNESS: I interpreted it as polymerase
`
`KRAMM COURT REPORTING
`
`Page: 24
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`
`
`Deposition of Floyd Romesberg, Ph.D.
`
`INTELLIGENT BIO-SYSTEMS, INC. vs. ILLUMINA CAMBRIDGE, LTD.
`
` 09:40:19 1 mediated incorporation. I assume that someone then
`
` 09:40:22 2 would have done the same thing.
`
` 09:40:26 3 BY MR. SEGAL:
`
` 09:40:26 4 Q. Now, this portion of the claim says includes
`
` 09:40:32 5 incorporating a nucleoside molecule.
`
` 09:40:36 6
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