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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
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`)))
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`NOVARTIS PHARMA AG, et al.,
`
`Plaintiffs,
`
`) CASE NO. 20-CV-690
`)
`
`vs.
`REGENERON PHARMACEUTICALS, INC.,
`)
`Defendant.
`______________________________________ )
`TRANSCRIPT OF PROCEEDINGS
`BEFORE THE HON. CHRISTIAN F. HUMMEL
`WEDNESDAY, AUGUST 18, 2021
`ALBANY, NEW YORK
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`))
`
`))
`
`FOR THE PLAINTIFFS:
`BOND SCHOENECK & KING, PLLC
`By: GEORGE R. MCGUIRE, ESQ.
`One Lincoln Center
`Syracuse, New York 13202
`GOODWIN PROCTER LLP
`By: ELIZABETH J. HOLLAND, ESQ. and MOLLY R. GRAMMEL, ESQ.
`620 Eighth Avenue
`New York, New York 10018
`
`
`FOR THE DEFENDANT:
`BARCLAY DAMON LLP
`By: DOUGLAS J. NASH, ESQ.
`125 East Jefferson Street
`Syracuse, New York 13202
`WEIL GOTSHAL & MANGES LLP
`BY:
`ANISH R. DESAI, ESQ.
`767 Fifth Avenue
`New York, New York 10153
`
`
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.001
`Regeneron v. Novartis, IPR2021-00816
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`
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
`
`)))
`
`NOVARTIS PHARMA AG, et al.,
`
`Plaintiffs,
`
`) CASE NO. 20-CV-690
`)
`
`vs.
`REGENERON PHARMACEUTICALS, INC.,
`)
`Defendant.
`______________________________________ )
`TRANSCRIPT OF PROCEEDINGS
`BEFORE THE HON. CHRISTIAN F. HUMMEL
`WEDNESDAY, AUGUST 18, 2021
`ALBANY, NEW YORK
`
`))
`
`))
`
`FOR THE PLAINTIFFS:
`BOND SCHOENECK & KING, PLLC
`By: GEORGE R. MCGUIRE, ESQ.
`One Lincoln Center
`Syracuse, New York 13202
`GOODWIN PROCTER LLP
`By: ELIZABETH J. HOLLAND, ESQ. and MOLLY R. GRAMMEL, ESQ.
`620 Eighth Avenue
`New York, New York 10018
`
`
`FOR THE DEFENDANT:
`BARCLAY DAMON LLP
`By: DOUGLAS J. NASH, ESQ.
`125 East Jefferson Street
`Syracuse, New York 13202
`WEIL GOTSHAL & MANGES LLP
`BY:
`ANISH R. DESAI, ESQ.
`767 Fifth Avenue
`New York, New York 10153
`
`
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.001
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
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`(Open court.)
`THE CLERK: Today is Wednesday, August 18, 2021,
`10:31 a.m. The case is Novartis Pharma AG et al. versus
`Regeneron Pharmaceuticals, Inc., docket No. 20-CV-690. May we
`have appearances for the record.
`MR. MCGUIRE: George McGuire for Bond, Schoeneck &
`King, Your Honor, for plaintiffs.
`THE COURT: Good morning, Mr. McGuire.
`MS. HOLLAND: Good morning, Your Honor. Elizabeth
`Holland of Goodwin Procter for Novartis plaintiffs.
`THE COURT: Good morning, Ms. Holland.
`MS. GRAMMEL: Good morning, Your Honor. Molly
`Grammel, Goodwin Procter for Novartis as well.
`THE COURT: Good morning, Ms. Grammel.
`MR. NASH: Your Honor, Doug Nash from Barclay Damon
`for Regeneron.
`THE COURT: Good morning, Mr. Nash.
`MR. DESAI: Good morning, Your Honor. Anish Desai
`here on behalf of the Regeneron.
`THE COURT: Good morning, Mr. Desai.
`Are there additional counsel appearing by phone this
`
`morning?
`
`MS. HOLLAND: No, Your Honor. We have clients on the
`phone who are counsel.
`THE COURT: That's fine. Do you wish them to note
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.002
`Regeneron v. Novartis, IPR2021-00816
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`3
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`20-CV-690
`their appearance, or are you happy with the three of you?
`MS. HOLLAND: I'm happy, but I'm happy to introduce
`them as well. I believe we have Cynthia Lopez, Peter Waibel,
`and Michelle Kitchen from Novartis legal department.
`THE COURT: Good morning, counselors.
`In addition, folks -- let me back up. I'm Judge
`Hummel. I'm one of the magistrate judges. In addition, we had
`a call from a member of the public who indicated they may wish
`to call in this morning. I think my courtroom deputy,
`Ms. Burtt, advised you of that. Because we're conducting this
`in open court and on the record, it's a public proceeding. So
`the public has the right to appear.
`Secondly, as you know, you may know, here in the
`Northern District, we've adopted a mask requirement in the
`public airways, but not in here. You're welcome to keep your
`masks off. I presume if you've taken your mask off, you're
`fully vaccinated. I'm fully vaccinated to the extent you wanted
`to know that. So it's not my intention to wear a mask. If at
`some point someone feels uncomfortable, they're welcome to do
`so.
`
`I've had an opportunity to review the civil case
`management plan which was submitted with respect to this matter,
`which is docket No. 73, which was 24 pages in length. I've also
`reviewed the exhibits which are annexed to that document, which
`appear among other places at docket No. 73-1 and 73-2, 73-1
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.003
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`being a comparison of the proposed case schedules set forth for
`the plaintiff Novartis and defendant Regeneron with respect to
`this matter.
`Before we get into the specifics of the order, let me
`just advise you that it is not my intention to redo discovery
`that was done in the Southern District of New York or may have
`been done somewhere else. To the extent that discovery is done,
`has been done, I assume you folks will take steps to make
`certain that it can be used here. So to the extent that people
`were deposed in the ITC proceeding or in the Southern District,
`we're not going to reinvent the wheel or redo all of that
`discovery. Having discussed this matter with another member of
`the judiciary, we want to move this matter forward in an
`expeditious but fair fashion.
`Having said that, I'm going to go through docket
`No. 73-1, which contains the proposed schedules. And then to
`the extent I wish to hear from someone with respect to a
`particular issue, I'll give each attorney an opportunity or each
`side the opportunity to be heard with respect to that.
`If you go down to docket No. 73-1, beginning with
`patentee infringement contentions, there seems to be agreement
`those will be filed by September 1 of 2021.
`You then go to the civil case management plan, which
`is docket No. 73. With respect to joinder of parties and
`amendment of pleadings, I'm going to direct that any such
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.004
`Regeneron v. Novartis, IPR2021-00816
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`5
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`20-CV-690
`applications for joinder of parties be made by September 15 of
`2021. With respect to the next item, accused noninfringement,
`invalidity, unenforceability contentions, I'm going to direct
`those be filed by September 22 of 2021.
`And I should note we will do an order containing all
`of these matters when it's done, but I wanted to give you these
`today.
`
`The next dispute involves the necessity or the need
`for claims construction in this matter. We're not going to redo
`claims construction which may have been done in the ITC or in
`the Southern District. However, Regeneron contends that there
`are additional claims construction which needs to be done.
`I guess I'll hear from Regeneron first and give
`someone from Novartis a chance to be heard. Who would like to
`speak on behalf of the issue of the need for additional claims
`construction?
`MR. DESAI: Your Honor, I'll speak to that.
`THE COURT: Go ahead, Counselor.
`MR. DESAI: So in the ITC case, there was a claim
`construction hearing, and then -- but unfortunately because the
`way the ITC works, it does not allow us I believe to skip claim
`construction here in the district court. And the reason being
`the ITC proceedings are conducted as bench trials, and it is
`frequently the case --
`THE REPORTER: Can you slow down, please.
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.005
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
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`6
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`MR. DESAI: Sure.
`THE COURT: I thought you spoke slowly. Nice to see
`someone else yelled at by one of our court reporters. Thank
`you, Mr. Desai.
`MR. DESAI: I think it is frequently the case that ITC
`judges will defer on claim construction rulings until after a
`trial because oftentimes, new claim construction issues come up
`during expert discovery and prehearing briefs. Regeneron
`believes that is what happened in our ITC case. Additional
`claim construction issues arose during expert discovery and in
`the prehearing briefs. And if Novartis had not abandoned the
`ITC case 12 days before trial, the ITC judges would have heard
`those claim construction disputes and then had to decide them.
`And it is okay in an ITC case for the judge to hear
`claim construction issues at trial because the judge is both
`trier of fact and law. Unfortunately in a district court case,
`that can't happen. It's black letter law that claim
`construction issues cannot be given to the jury. So they must
`be decided in advance. And I think that's why typically local
`patent rules call for claim construction discovery, exchange of
`terms that may be in dispute, and then ultimately briefing and a
`claim construction hearing.
`And I think in our case management plan, we identified
`that there are a number of terms that came up that although they
`were not briefed in the Markman process in the ITC, later on in
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.006
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`the case, it became apparent there were disputes about what
`certain terms mean. For example, what the meaning of terminal
`sterilization means. There was an issue there as to what level
`of sterilization is required. That's a claim construction
`issue. There was also dispute regarding in our opinion how
`particle limitations should be measured. Again, we think that's
`an issue of claim construction that has to be decided before
`this case could go to a jury. Those are a couple examples.
`I think when we do have the opportunity to exchange
`claim construction terms, we'll do that with the other side.
`We'll exchange constructions, and perhaps those disputes will go
`away because the parties will agree, but we have to go through
`that process.
`THE COURT: Who would like to be heard on behalf of
`Novartis?
`MS. HOLLAND: I would, Your Honor. Thank you.
`So I think as Your Honor saw, we attached some of the
`claim construction documents from the ITC case. And as you can
`see, Your Honor, there were no disputes about the meaning of
`claim terms, which is what claim construction is all about. The
`only disputes as the parties got together, talked through all
`the claim terms, and decided that we could agree on everything.
`The sole exception being Regeneron's assertion that
`some of the limitations were indefinite, which is not a claim
`construction issue per se. It's an invalidity issue. It's a
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.007
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`ground to invalidate a patent.
`The administrative law judge decided to hear that in
`the context of claim construction, but that's not at all typical
`in a district court. There are many judges that don't do that
`as a claim construction because as I said, it's an issue of
`invalidity either at summary judgment or at trial.
`We looked through the submission from Regeneron in
`claim construction. We didn't see any disputes there. We don't
`believe there's any dispute on terminal sterilization. We don't
`believe there's any dispute on particle limitation. These were
`not things that were raised before ever to us I believe in the
`context of the ITC case.
`Just in terms of the judge ruling on claim
`construction at the ITC, the judge made clear any claim
`construction disputes had to happen at the claim construction
`stage, and that is what happened. The parties worked hard to go
`through all the claim terms, figure out if there are any
`disputes. And as it happened, there weren't except for these
`indefiniteness issues.
`And as I think you also saw from the transcript
`following the claim construction hearing, the judge did decide
`the issue. He just hadn't formally put out a written ruling on
`it because that was going to be done in the context of the final
`ruling at the end of the case. But when you read the
`transcript, it's clear the judge made a decision. The judge
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.008
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`didn't even want any extra briefing, although some was done at
`Regeneron's request.
`So I do believe everything was done at the claim
`construction hearing and that claim construction should not be a
`reason to hold up this case. There does not seem to be any
`dispute between the parties.
`THE COURT: Mr. Desai.
`MR. DESAI: Your Honor, I simply disagree about the
`was the ITC process works. I've been involved in many ITC
`trials. I just did one in June where we did the trial and we
`had a Markman hearing. And the judge, Judge Cheney, the same
`judge in our case, did not issue a Markman ruling before the
`trial. Claim construction issues were again argued at the trial
`including new ones. And when the judge issues his final
`decision, he will decide those issues.
`So because we didn't have a trial in the Regeneron
`case, not all of the claim construction issues came to fruition.
`THE COURT: Let me interrupt you. What claim
`construction issues do you contend need to be addressed at this
`time?
`
`MR. DESAI: Specifically the ones we identified in our
`case management plan, which would be the conditions at which the
`break loose and slide force may be measured. There's a dispute
`we think regarding how the silicone oil values on the syringe
`can be measured. There's a dispute we believe regarding how the
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.009
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`claimed particle limitations can be measured. These are all
`issues that came up as a result of arguments that Novartis made
`after the claim construction hearing.
`In other words, they were trying to distinguish prior
`art that we were asserting on the basis of, oh, the prior art
`doesn't disclose that the particle limitations are measured by
`this way. Our position is, for example, the claims encompass
`multiple ways of measuring. These are all disputes that came up
`after the claim construction hearing took place, but would have
`been resolved at the ITC hearing, had we had one.
`And I think the fifth one I mentioned here was the
`meaning of terminally sterilized, a specific example. We
`believe Novartis is trying to argue that their claim requires a
`certain amount of sterilization, like a numerical value. They
`made arguments that prior art doesn't meet the claim because it
`doesn't disclose having a particular amount. And our position
`is the claim in fact does not require a particular amount of
`sterilization. So that really is a claim construction dispute.
`It's not a dispute about what the prior art means. It's a
`dispute about what the claim requires.
`MS. HOLLAND: Your Honor, I don't believe those are
`disputes. That's the bottom line. I don't think those are
`things that the parties have a disagreement about. I think
`those are things we would work out if necessary.
`I would note that the conditions measured limitation
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0010
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`that Mr. Desai just spoke about, that was raised as an
`indefiniteness argument at the ITC, and I don't know if
`Regeneron's abandoning its indefinite position, indefiniteness
`position or not on that limitation. But I don't, just hearing
`what Mr. Desai said and reading the submission, I don't think
`we're going to have disputes here that require claim
`construction.
`THE COURT: The Court has listened to the arguments of
`counsel and has read again through the very thorough civil case
`management plan. The Court is going to have limited claim
`construction specifically limited to those issues which have
`been raised by the defendants in their civil case management
`plan. There will be no claim construction beyond that.
`Given the limited issues, I'm going to shorten the
`deadlines which are ordinarily set forth in the local patent
`rules, particularly local patent rule 4.2. I'm going to direct
`that the exchange of terms for construction take place on or
`before October 4 of 2021, again limited to the specific issues
`which Mr. Desai has just addressed. If after that is done, the
`parties determine there in fact is no need for claim
`construction, they can let the Court know, and we'll address
`this schedule again. The exchange of proposed construction will
`take place on October 29, on or before October 29 of 2020.
`Turning to page 2 of 4 of document 73.1, the joint
`claim construction statement will be filed by November 12 of
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0011
`Regeneron v. Novartis, IPR2021-00816
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`12
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`20-CV-690
`2021. Claim construction discovery will be completed by
`December 3 of 2021. Opening Markman briefs will be filed on
`December 24 of 2021. Opposing Markman briefs will be filed by
`January 21 of 2022. Proposed schedule for the Markman hearing
`will tentatively be scheduled for February 21 of 2022. I'm not
`certain if Judge McAvoy or myself will be conducting the Markman
`hearing. I have to talk to Judge McAvoy and see what his
`pleasure is.
`Substantial completion of fact discovery will be done
`within 30 days after the claims construction decision, and
`advice of counsel disclosure will be done 30 days after the
`claims construction. The initial expert reports will be filed
`60 days after the claims construction decision. The responsive
`experts will be filed 30 days after the service of initial
`expert disclosure. All discovery will be completed within 90
`days after the claims construction decision.
`Filing of motions will be done within 30 days after
`the completion of all discovery. Judge McAvoy will set a trial
`date for you. I know that each of the sides have proposed
`different dates for trial. Senior United States District Court
`Judge McAvoy sets his own trial dates. So I cannot tell you
`when he will want to do that.
`That would appear to me to address the issues raised
`in the civil case management plan. Does Novartis have anything
`else they'd like to address this morning?
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0012
`Regeneron v. Novartis, IPR2021-00816
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`
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`20-CV-690
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`MS. HOLLAND: Yes, Your Honor. I think I'd like to
`address specifically the issue of coordination of discovery with
`the Southern District action. I believe there's a dispute
`between the parties with respect to depositions, in particular
`of witnesses who are going to be deposed in the Southern
`District action.
`We believe especially in these COVID times, for the
`efficiency and convenience of the parties and the witnesses,
`there should be one deposition per deponent where all issues are
`covered, whether they're related only to the Southern District
`action or only to the NDNY action or both. That will permit the
`witness to appear once. It will be the most efficient way to
`handle it, and it will cause the least disruption for the
`witnesses.
`THE COURT: Mr. Desai.
`MR. DESAI: Your Honor, I think we're willing to
`coordinate in this respect. I think there are other disputes in
`the Southern District of New York that need to be resolved,
`which is the number of depositions. There's a dispute there
`right now as to how many can take place, and I think also a
`dispute regarding how long the depositions will be per person
`and per party.
`I don't think we want to replicate. We don't need to
`depose people twice on the same issues. So I think we're going
`to take depositions of people, cover the issues we need to in
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0013
`Regeneron v. Novartis, IPR2021-00816
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`both cases, and we'll do that. I think there are disputes that
`are taking place in the Southern District of New York that
`override that right now, which is the number of depositions and
`the amount of time.
`THE COURT: Who is going to resolve that issue for you
`down in the Southern District? Is that the district court judge
`or the magistrate judge?
`MR. DESAI: I believe I think the current status of
`that right now is I believe the parties have been meeting and
`conferring. And if it does go to the magistrate, I believe it
`will go to the magistrate.
`THE COURT: To the extent that depositions are going
`to be done, I'm going to direct that one deposition be done in
`both cases. To the extent that a party thinks that they need to
`conduct a second deposition of a witness, the burden will be on
`them to meet and confer with opposing counsel and reach out to
`the Court. I do not want multiple depositions. I think the
`first thing I said to you folks was we're not going to reinvent
`the wheel. To me, that would constitute reinventing the wheel.
`What else, if anything, do you want to address,
`
`Counsel?
`
`MS. HOLLAND: Your Honor, I think it's the same issue
`with respect to expert reports, although that's a bit farther
`down the road, and with respect to 30(b)(6) depositions as well.
`Not to repeat topics separately in each jurisdiction, but I
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`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0014
`Regeneron v. Novartis, IPR2021-00816
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`believe Your Honor covered that already. So I guess the other
`issue is expert reports, also one per expert who's going to
`cover like issues in both cases.
`THE COURT: To the extent that discovery can be
`coordinated in both actions by way of deposition or expert
`reports, there should be one deposition and one expert report.
`If you need to serve something additional in this action, reach
`out to opposing counsel. And to the extent that a dispute
`cannot be resolved, we'll get together and I'll resolve it.
`Mr. Desai, I sense you want to speak.
`MR. DESAI: Your Honor, I think we just noticed there
`may be an issue with the way the schedule was proposed in the
`sense of it looks like the completion of all discovery may be
`the same day that the responsive expert reports are due.
`THE COURT: If it is, I misspoke. I apologize.
`MR. DESAI: If that's the case, there wouldn't be time
`to take depositions of experts. Our math may be wrong too.
`THE COURT: No. It's the reason I went to law school,
`Mr. Desai.
`So let me ask plaintiffs' counsel. When would your
`proposed expert reports be filed once discovery is completed?
`They seem to think my math doesn't work.
`MS. HOLLAND: I think again, we've done expert
`discovery on all these issues already. So I would say we can
`really speed this up by having let's say two weeks after close
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0015
`Regeneron v. Novartis, IPR2021-00816
`
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`16
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`20-CV-690
`of fact discovery, expert reports. Then maybe three weeks after
`that, responsive reports. And then close of fact discovery four
`weeks after that.
`THE COURT: Mr. Desai.
`MR. DESAI: I believe the issue is when does the
`expert discovery close. And I think we would just propose that
`we be given three weeks to take expert depositions. So that
`would be -- you would probably just need to add 21 days to the
`90 for completion of all discovery.
`MS. HOLLAND: I guess, Your Honor, my point was that
`instead of doing that, we can compress things a little bit to
`leave the 90 days after claim construction as the close of
`expert discovery.
`THE COURT: I'm going to back the 90 days out 21 days
`in order for you to have time to conduct expert discovery.
`Anything else, Mr. Desai, you want to talk about this
`
`morning?
`
`MR. DESAI: Your Honor, I don't believe anything more.
`THE COURT: Any other counsel want to be heard?
`MS. HOLLAND: Thank you very much, Your Honor. I know
`that the issue of the trial date is being left to Judge McAvoy.
`But to the extent there's going to be discussion or
`communication about that between Your Honor and Judge McAvoy,
`one concern we have, which is something that I think we laid out
`in our plan, is that the Southern District case, which is really
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0016
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
`a counterclaim here and should have been filed as such, doesn't
`get ahead of our case. That is a concern for us. It was filed
`as a response to our complaint. The case was stayed at the
`request of counsel, and then they ran to the Southern District
`to file essentially a counterclaim. So our concern is that
`whenever the trial date is set, it is set in such a way that the
`Southern District case doesn't get ahead of us, which would be a
`counterclaim getting ahead of the main claim.
`THE COURT: I've had conversations with other members
`of the judiciary. I will discuss that issue specifically with
`Judge McAvoy. There was a time we used to set criminal dates
`for Judge McAvoy's cases, and he determined that's not something
`he wanted us to do. So I will address your concern with him,
`but he will ultimately set the trial.
`MS. HOLLAND: Thank you very much, Your Honor.
`MR. DESAI: Your Honor, may I add one point to that,
`
`please?
`
`THE COURT: Sure.
`MR. DESAI: While I understand Ms. Holland is bringing
`up the Southern District of New York case, we really believe the
`trial date here, the intent here is to go to the patent office
`and request the patent office deny review without substantive --
`without review of the substance on the basis this New York case
`is going to proceed to a trial at a certain date.
`Specifically on July 28, Novartis submitted a brief to
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0017
`Regeneron v. Novartis, IPR2021-00816
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`the patent office, and they said, quote, "As the NDNY litigation
`is likely to proceed to a trial expeditiously, potentially at or
`around the October 2022 deadline for a final written decision,
`this favors denial of institution."
`They would like to use a trial date to tell the patent
`office, please don't review the substance of this, and we think
`that's a real problem. In particular, because as Your Honor has
`seen in our filings, there was an objective third party in the
`ITC case that said this patent was invalid. And IPRs that are
`submitted to the patent office are done for precisely this
`reason: to have an expeditious review of a patent that is
`potentially problematic.
`THE COURT: Again, counselors, Judge McAvoy will do
`what Judge McAvoy wants to do. I'm not in a position to tell
`the senior district court judge what to do if I want to continue
`to have my job. Unless one of your firms is looking for a
`former insurance defense lawyer, I need to keep this position.
`I'll convey your respective concerns to Judge McAvoy.
`If you know Judge McAvoy, he'll make his own determination.
`Anything else anyone would like to address? The other
`counselors have been strangely silent. Anyone else want to be
`heard? I was actually only asking to be polite. It was nice
`meeting you folks. Have a good weekend. Thank you.
`(The matter adjourned at 10:54 a.m.)
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0018
`Regeneron v. Novartis, IPR2021-00816
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`20-CV-690
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`CERTIFICATION OF OFFICIAL REPORTER
`
`19
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`I, JACQUELINE STROFFOLINO, RPR, Official Court Reporter,
`in and for the United States District Court for the Northern
`District of New York, do hereby certify that pursuant to Section
`753, Title 28, United States Code, that the foregoing is a true
`and correct transcript of the stenographically reported
`proceedings held in the above-entitled matter and that the
`transcript page format is in conformance with the regulations of
`the Judicial Conference of the United States.
`
`Dated this 23rd day of August, 2021.
`
`/s/ JACQUELINE STROFFOLINO
`JACQUELINE STROFFOLINO, RPR
`FEDERAL OFFICIAL COURT REPORTER
`
`JACQUELINE STROFFOLINO, RPR
`UNITED STATES DISTRICT COURT - NDNY
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`Novartis Exhibit 2093.0019
`Regeneron v. Novartis, IPR2021-00816
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`
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