Transcript of David Alan Somers,
`Ph.D.
`
`Date: July 27, 2022
`Case: Ricetec, Inc., -v- BASF SE (PTAB)
`
`Planet Depos
`Phone: 888.433.3767
`Email: transcripts@planetdepos.com
`www.planetdepos.com
`
`WORLDWIDE COURT REPORTING & LITIGATION TECHNOLOGY
`
`PGR2021-00114 Ex. 1052
`RiceTec, Inc.
`
`
`Ph.D.
`
`Date: July 27, 2022
`Case: Ricetec, Inc., -v- BASF SE (PTAB)
`
`Planet Depos
`Phone: 888.433.3767
`Email: transcripts@planetdepos.com
`www.planetdepos.com
`
`WORLDWIDE COURT REPORTING & LITIGATION TECHNOLOGY
`
`PGR2021-00114 Ex. 1052
`RiceTec, Inc.
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
` RICETEC, INC., PETITIONER,
` vs.
` BASF SE, PATENT OWNER.
`
` Case No. PGR2021-00113
` U.S. Patent 11,096,345
` and
` Case No. PGR2021-00114
` U.S. Patent 11,096,346
`
` VIDEOTAPED DEPOSITION OF DR. DAVID ALAN SOMERS
` New York, New York
` Wednesday, July 27, 2022
` 9:26 AM
`
`Job No.: 457751
`Pages: 1 - 308
`Recorded By: Enrique Casas
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`July 27, 2022
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`2
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` Deposition of Dr. David Alan Somers,
`held at the offices of:
`
` MAYER BROWN, LLP
` 1221 Avenue of the Americas
` New York, New York 10020
`
` Pursuant to Notice, before
`Enrique Casas, Notary Public in and for the
`State of New York.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`3
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` A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
` HOWARD S. SUH, ESQUIRE
` Fox Rothschild LLP (NY)
` 101 Park Avenue
` New York, NY 10017
` Phone: 212.878.7900
`
` ON BEHALF OF THE RESPONDENT:
` RICHARD MCCORMICK, ESQ.
` Mayer Brown, LLP
` 1221 Avenue of the Americas
` New York, NY 10020
` Phone: 212.506.2500
`
`ALSO PRESENT:
` ANDREW GEDACHT- VIDEOGRAPHER
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`4
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` C O N T E N T S
`EXAMINATION OF DR. DAVID ALAN SOMERS PAGE
` By Mr. Suh 7
` 293
` By Mr. McCormick 282
`
` E X H I B I T S
` (Attached to transcript.)
`DEPOSITION EXHIBIT PAGE
`Exhibit 1 Declaration of David Alan Somers 10
`Exhibit 2 Declaration of Dale Shaner 11
`Exhibit 3 U.S. Patent Number 11096345
`Exhibit 4 Mankin PCT Application 66
`Exhibit 5 Ruiz-Santaella Abstract 118
`Exhibit 6 Evolution in Action: Plants Resistant
` to Herbicides by Powles and Yu 122
`Exhibit 7 Resistance to Herbicides Caused by
` Single Amino Acid Mutations in Acetyl-CoA
` Carboxylase and the Resistant Populations
` of Grassy Weeds by Jang, et al. 137
`Exhibit 8 Delye 2008 Publication 139
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`July 27, 2022
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`5
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`Exhibit 9 Resistance to Acetyl-CoA Carboxylase-
` Inhibiting Herbicides by Shiv Kaundun 145
`Exhibit 10 Declaration of Luke Llewellyn Mankin
` Under 37 CFR Section 1.132 160
`Exhibit 11 Patent 182
`Exhibit 12 Leon Neuteboom Application 187
`Exhibit 13 Declaration of Nilda Roma Burgos 203
`Exhibit 14 Molecular Basis for Sensitivity to
` Acetyl-Coenzyme A Carboxylase Inhibitors
` in Black Grass by Delye, et al. 230
`Exhibit 15 Amendment to Application 15/395832 249
`Exhibit 16 Declaration of Dr. Mankin under 37 CFR
` Section 1.132 271
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`PGR2021-00114 Ex. 1052
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`6
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`P R O C E E D I N G S
` VIDEOGRAPHER: In the matter of RiceTec,
`Inc. v. BASF SE in the U.S. Patent & Trademark
`Office, Case Number PGR2021-00113. Today's date is
`July 27th, 2022, and the time on the video monitor is
`9:26 a.m.
` The video -- the videographer today is
`Andrew Gedacht, representing Planet Depos. This video
`deposition is being taken place at Mayer Brown, LLP,
`1221 6th Avenue, New York, New York. Would counsel
`please identify themselves and state whom they
`represent?
` MR. SUH: My name is Howard S. Suh from
`the Law Firm of Fox Rothschild, and I represent
`petitioner, RiceTec, Inc.
` MR. MCCORMICK: Richard McCormick from the
`Mayer Brown law firm for patent owner, BASF.
` VIDEOGRAPHER: The Court Reporter today is
`Enrique Casas, representing Planet Depos. Would the
`Reporter please swear in the witness?
` THE REPORTER: Dr. Somers, will you raise
`your right hand, please? Do you swear or affirm under
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
`
`7
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`the penalties of perjury that the testimony you shall
`give will be the truth, the whole truth, and nothing
`but the truth?
` THE WITNESS: I do.
` THE REPORTER: Counsel?
` MR. SUH: I just want to make one
`correction for the record. This deposition is also
`being presented in case number PGR2021-00114. So,
`there are two PGR proceedings that the witness has
`been noticed for.
` THE REPORTER: Noted.
` DIRECT EXAMINATION
`BY MR. SUH:
` Q Good morning, Dr. Somers.
` A Good morning.
` Q Can you please state your full name for the
`record?
` A My name is David Alan Somers.
` Q Okay. And where do you currently reside?
` A Belfast, Maine.
` Q Okay. And are you currently employed?
` A No. I'm a retired consultant.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`8
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` Q Okay. Do you have your own consultancy
`firm?
` A I do.
` Q And what's the name of that?
` A Verecia, LLC.
` Q And what is the address of that consultancy
`firm?
` A 6 Airmail Lane, Belfast, Maine.
` Q Okay. And what is your current residence
`address?
` A Same.
` Q And, Dr. Somers, have you ever had your
`deposition taken before?
` A Many, many years ago.
` Q How many years ago?
` A Nine -- in 19 -- probably 1992.
` Q 1992. okay. So, I'm going to go over some
`ground rules --
` A Okay.
` Q -- with respect to the deposition. So, I'm
`going to be asking you a series of questions. Even
`though we have a videographer, you are expected to
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`9
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`answer them verbally instead of just nodding.
` From time to time, your Counsel, Mr. McCormick,
`may object to the form of my questions, but I will
`ask you to answer those questions to the best that
`you can, despite the objection, unless, of course,
`Mr. McCormick, your counsel, specifically instructs
`you not to answer. Do you understand?
` A I do.
` Q Okay. So, Dr. Somers, what did you do to
`prepare for your deposition today?
` A I read a whole range of documents,
`including all of those cited in the evidence page of
`my deposition.
` Q When you mean the evidence page cited in
`your deposition, do you mean cited in your expert
`report or in your deposition?
` A I'm sorry. My declaration. I -- I get those
`confused. My apologies.
` Q Was there an evidence page specifically
`made with respect to evidence that you reviewed in
`preparation for your expert declaration?
` A Yes.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`10
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` Q Let's mark as Exhibit 1 the Declaration of
`David Alan Somers in case PGR2021-00113.
` (EXHIBIT 1 MARKED FOR IDENTIFICATION)
` MR. MCCORMICK: Well, just for the record,
`this is Exhibit 2036 in PGR2021-00113.
`BY MR. SUH:
` Q Dr. Somers, is this the Declaration that
`you submitted in this case for case number PGR2021-
`00113?
` A Yes.
` Q Can you tell me where the evidence page is
`with respect to this declarations?
` A Yeah. I can't.
` Q When -- earlier, when you mentioned that
`you -- you reviewed an evidence page, was that a
`specific page that listed all of the literature or
`materials that you actually reviewed in preparing
`this particular declaration?
` A Actually, it was -- as I recall, it was a
`page from one of the previous declarations. I think
`it was Shaner's.
` Q I understand. So, in preparation for your
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
`
`11
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`deposition today, you reviewed an evidence page that
`Dr. Shaner relied upon in preparation for his expert
`declaration?
` A That's my understanding.
` Q Let's mark as Exhibit 2 the Declaration of
`Dale Shaner in case number PGR2021-00113. That'll be
`Somers Exhibit 2.
` (EXHIBIT 2 MARKED FOR IDENTIFICATION)
` MR. MCCORMICK: And, again, just for the
`record, this is Exhibit 1002 as filed with the PTO in
`PGR2021-00113.
`BY MR. SUH:
` Q So, Dr. Somers, placed before you is
`Exhibit 2, the Declaration of Dale Shaner in this
`particular case, for the 113 action. Is there an
`evidence page with respect to the documents that Dr.
`Shaner relied upon in preparation for his report?
` A I believe that's the exhibits.
` Q I see. So, you're referring to, in Exhibit
`2, the exhibits that are listed from Roman Numerals
`IV through VIII; is that right?
` A I'm sorry. I don't understand the question.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`12
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`I -- I'm looking at page -- oh, right. Page four.
`Yeah. Okay.
` Q Roman numeral IV.
` A I thought you meant -- yeah. Right. That's
`correct.
` Q So -- so, in preparation for -- for your
`deposition today, you reviewed the exhibits that
`appear at Roman Numeral IV through VIII in Dr.
`Shaner's Declaration, which was marked as Exhibit 2;
`is that right?
` A Yes.
` Q All right. Did you review any other
`documents other than what's listed here?
` A I did general literature searches around
`the subject area.
` Q What do you understand the subject area
`mean?
` A Mean --
` MR. MCCORMICK: Object to form.
`BY MR. SUH:
` A Basically, acetyl-CoA carboxylase,
`inhibiting herbicides, and tolerance mutations.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`13
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` Q Can you recall if there were any particular
`publications in the literature that you reviewed in
`preparation for your expert report today that you
`just mentioned?
` A Can I recall any of the publications?
` Q Uh-huh.
` MR. MCCORMICK: I'm just going to caution
`the witness not to divulge, in answering this
`question, any communications that we may have had in
`preparing for the deposition, including any documents
`that I may have given to you.
` THE WITNESS: Right.
` MR. MCCORMICK: You're free to answer,
`otherwise, and particular with, you know, if you had
`found anything on your own.
` THE WITNESS: Could you repeat the
`question?
`BY MR. SUH:
` Q Yeah. In response to one of my earlier
`questions, you said that you had conducted a general
`literature search in the subject of ACCase.
` A Uh-huh.
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`July 27, 2022
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`14
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` Q I believe you said tolerance mutations,
`something to that effect. Can you tell me
`specifically what literature you actually searched
`for and reviewed?
` A Yes. Well, I started by reviewing my own
`publications in corn, which are listed in my CV. I
`also did searches on specific mutants, for example,
`the G-2096-S mutation, to see if there had been any
`follow-up work from the original Ruiz-Santaella
`publication in 2006.
` Q And did you find any follow-up work with
`respect to the G-2096-S mutation in ACCase after the
`publication of Ruiz-Santaella?
` A I did.
` Q And can you identify for me what those
`follow-up publications were?
` A It's -- I can't remember the citation, but
`the main author was Cruz-Hipolito. It was from the De
`Prado Lab. It was published in, I believe, 2012,
`submitted in 2011.
` Q Do you recall what the 2012, 2011 Cruz-
`Hipolito publication stated with respect to the G-
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`15
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`2096 mutation?
` A Yeah. In -- in essence, it -- it did a
`thorough characterization of the herbicide tolerance
`spectrum of that mutation in pholouries, and it
`showed that it was -- that mutation exhibited
`tolerance to not only Fop herbicides, but a few Dims,
`but namely Cycloxydim.
` Q And did you say that that publication was
`in 2011?
` A 2012. I think it was submitted in 2011. I -
`- I mentioned that because in the -- so -- so, I -- I
`was an academic for many years, and so understanding
`the relationship of a paper to somebody else's, you
`know, previous work, you can see that the first
`author of that paper was likely a PhD student. They
`published their PhD, which is deposited at the
`University of Cordoba, I believe, in Spain. And
`although I didn't access the -- the thesis, I suspect
`that this work had been presented at several
`meetings. That's normally the way we science graduate
`students, you know, prepare for their thesis and
`present their results.
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` Q Did this Cruz-Hipolito paper show that the
`G-2096-S mutation in ACCase and pholouries was
`showing herbicide tolerance to Cycloxydim?
` A Yes.
` Q Any other Dims?
` A I can't recall at the moment.
` MR. SUH: Counsel, may we request the
`Cruz-Hipolito 2012 publication during a break?
` MR. MCCORMICK: You can get it. I don't
`even know that we have a copy of it. You know, you
`might want to ask him if we have a copy of it, but I
`suspect that we looked at this online, but --
` MR. SUH: Right.
` MR. MCCORMICK: Yeah.
`BY MR. SUH:
` Q Do you have a copy of it, Doctor?
` A Not with me.
` Q In addition to doing this general
`literature search with respect to ACCase and, I
`believe, tolerance mutation, did you review anything
`else in preparation for your deposition today?
` A It -- it's possible. I can't recall
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`specifically beyond these papers. I -- I don't think
`anything else was encountered.
` Q Did you review an expert report by -- or a
`declaration by Dr. Burgos?
` A I did.
` Q And was that in prep --
` MR. MCCORMICK: Let me just object to form
`and the time frame. Yeah.
`BY MR. SUH:
` Q And did you review that declaration from
`Dr. Burgos in preparation for today's deposition?
` A Yes.
` Q Okay. And did you review that declaration
`by Dr. Burgos in preparation for your expert
`declaration?
` A Yes.
` Q Now, in preparation for your deposition,
`did you speak with any of the named inventors of the
`345 and 346 patents?
` A No.
` Q In preparation for your deposition, did you
`review any data or any internal reports from BASF
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`showing herbicide tolerant plants with ACCase
`mutations?
` MR. MCCORMICK: Can I hear the question
`back again? Sorry.
` THE REPORTER: Read it back?
` MR. MCCORMICK: I just want to read it.
`Can you read it back? Yeah.
` (REPORTER PLAYS BACK REQUESTED TESTIMONY)
` MR. MCCORMICK: Object to form. Compound.
`Vague.
`BY MR. SUH:
` Q You can still answer, if you understand the
`question.
` A Beyond the patents, no.
` Q Now, going back to your declaration, which
`was marked as Exhibit 1 in your deposition, who
`contacted you with respect to preparing this
`particular declaration?
` A Who contacted me? It would be the Mayer
`Brown associates.
` Q The attorneys that work at Mayer Brown?
` A Right.
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` Q Okay. Was it Mr. McCormick sitting here?
` A It was Mr. McCormick and his colleagues.
` Q And, similarly, in preparing your -- your
`declaration, did you speak with anyone at BASF in
`preparing your report?
` A No.
` Q Did you speak with Dr. Mankin?
` A No.
` Q Did you review any declarations submitted
`by Dr. Mankin in connection with the prosecution of
`the 345 or 346 patents?
` A I did not.
` Q And, similarly, did you review any data or
`internal reports by BASF showing herbicide tolerant
`rice plants with ACCase mutations in preparation for
`your declaration?
` MR. MCCORMICK: Object to form.
` THE WITNESS: Beyond the patents, no.
`BY MR. SUH:
` Q Did you earlier testify that you did review
`Dr. Burgos's report in preparation for your
`declaration?
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` A I did.
` Q If we look at Exhibit 1 and if we could
`turn to paragraph 12, do you see it states, "In
`addition to my general knowledge gained as a result
`of my education and experience in this field, I have
`reviewed and considered, among other things, the 345
`patent, the declaration of Dr. Shaner and exhibits
`relied upon by Dr. Shaner in his declaration and the
`deposition of Dr. Shaner"? Do you see that?
` A Yes.
` Q In addition to this, you also relied upon
`Dr. Burgos's declaration; right?
` MR. MCCORMICK: Object to form.
` THE WITNESS: Among other things, yes.
`BY MR. SUH:
` Q And what are some of the among other
`things?
` A Well, the publications mentioned as
`exhibits.
` Q In Dr. Burgos's declaration?
` A No. No. In Dr. Shaner's. Oh --
` Q Right.
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`Transcript of David Alan Somers, Ph.D.
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`21
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` A I'm sorry. It's included there already. No.
` Q Did you -- did you review the exhibits
`cited in Dr. Burgos's declaration in preparation for
`your declaration?
` A I -- there -- there's a tremendous amount
`of overlap between the two declarations. So, I can't
`-- I can't recall exactly.
` Q But in reviewing Dr. Burgos's declaration,
`did you happen to also look at the exhibits that she
`cited --
` A Uh-huh.
` Q -- in forming her opinions within her
`declaration?
` A I did.
` Q Sticking with Exhibit 1, let's look at
`paragraph 94.
` A 94.
` Q It says here under subheading, Dr. Shaner's
`Other Opinions, it states, quote, "I understand that
`Dr. Shaner has provided other opinions regarding the
`validity of the 345 patent. I have not been asked to
`provide any response to those opinions at this time,
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`Transcript of David Alan Somers, Ph.D.
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`and I reserve my right to supplement these opinions
`to address Dr. Shaner's other arguments to the extent
`the Board decides to institute review in this case."
`Do you see that?
` A Yes.
` Q What do you mean by "to the extent the
`Board decides to institute review in this case"?
` A If -- if there's further -- further
`arguments on either side of the case.
` MR. MCCORMICK: I think I can clarify
`that. That obviously is an error, a carryover.
` MR. SUH: A carryover from where?
` MR. MCCORMICK: I believe that's just --
`that -- that should not be in there. It -- it's not
`the correct time frame for when this declaration was
`submitted.
`BY MR. SUH:
` Q Dr. Somers, do -- do you understand that
`the Board has actually instituted review of the 345
`and 346 patents in this case?
` A Yes. I do.
` Q Okay. And when they --
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`23
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` A They provided -- yeah. They provided
`preliminary opinion. Correct.
` Q And -- and did you review that initial
`decision in preparation for your deposition today?
` A I did.
` Q Did you review that initial determination
`in preparation for your expert declaration?
` A Yes.
` Q Okay. And when your counsel said that this
`was a carryover, do you understand that it was a
`carryover from Dr. Burgos's report?
` A I -- I don't know where it came from.
` Q Now, Dr. Somers, I -- I don't want you to
`delve -- disclose specific communications that you
`had with your counsel, the BASF counsel, but can you
`tell me generally the process by which you arrived
`and signed your declaration in this case?
` MR. MCCORMICK: Object to form.
` THE WITNESS: Well --
` MR. MCCORMICK: Hold on. Let me -- yeah.
`Sorry. Let me -- let me -- let me just contemplate
`that question.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`24
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` You can answer that at a general level. I
`mean, as -- as he said, you're not going to disclose
`our communications.
` THE WITNESS: Right.
` MR. MCCORMICK: But I'm not going to let -
`- I'm not going to let you get too far into the
`drafting process because, as you know, that is --
`that's not subject matter you can inquire into. But
`at a general level, Dr. Somers, you can answer that
`question, if you're able.
` THE WITNESS: So, I -- I reviewed the
`exhibits. We draft -- we went through several drafts
`of the declaration.
`BY MR. SUH:
` Q Did you say that you went through several
`drafts?
` A I did.
` Q Did you put pen to paper or computer
`programming to save the document with respect to the
`first draft of your report?
` MR. MCCORMICK: You can answer that yes or
`no.
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`25
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` THE WITNESS: Repeat the question, though.
`Did --
`BY MR. SUH:
` Q Did you write the first draft of your
`report?
` A Yes.
` Q In writing the first draft of your report,
`did you rely upon Dr. Burgos's report?
` MR. MCCORMICK: All right. So, I'm going
`to stop the questioning here. This is inquiring into
`the mechanics of how he drafted his report. You know
`you can't inquire into that. So, you have his report.
`You can ask him whatever you want to know about what
`the opinions in his report are. If you want to know
`how he came about drafting it and the iterations of
`drafts, you can't inquire into that, and I'll just
`keep telling him not to answer those questions. So,
`I'm directing you not to answer that question.
` THE WITNESS: Right.
` MR. SUH: It's a yes or no answer.
` MR. MCCORMICK: I'm directing him not to
`answer it. You -- you can't inquire into how he came
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`26
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`upon his draft, his process. You have his final
`opinions. You're able to ask him whatever you like
`about his opinions in his draft. I mean, sorry, in
`his final signed report.
`BY MR. SUH:
` Q So, Dr. Somers, did you state earlier that
`you -- you actually wrote the first draft of your
`expert declaration?
` A Yes.
` Q Okay. Now, would it surprise you to learn
`that whole sections of your report lifted whole
`sections of Dr. Burgos's report on this case?
` MR. MCCORMICK: Object to form.
`Argumentative. Assumes facts not in evidence.
` THE WITNESS: No.
`BY MR. SUH:
` Q It would not surprise you?
` A No.
` Q And is it fair to say that in doing the
`first draft of your expert report, you copied whole
`sections of Dr. Burgos's report?
` MR. MCCORMICK: I direct the witness not
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`Transcript of David Alan Somers, Ph.D.
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`27
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`to answer that question as it inquiries into
`protected attorney work product in terms of the
`drafting process of his declaration. You don't
`answer.
`BY MR. SUH:
` Q Dr. Somers, did you speak with Dr. Burgos
`in preparation for your expert report?
` A No.
` Q Did you speak with Dr. Burgos in
`preparation for your deposition today?
` A No.
` Q Earlier, you stated that you would not be
`surprised to find that whole sections of your report
`were lifted from Dr. Burgos's report. Why -- why
`would it not surprise you?
` MR. MCCORMICK: Hold on. Let me just --
`yeah. I'll direct you not to answer that. I think
`this is going my -- my same direction as before on
`the same basis.
`BY MR. SUH:
` Q When did the Mayer Brown attorneys first
`contact you with respect to preparing expert
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`Transcript of David Alan Somers, Ph.D.
`July 27, 2022
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`28
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`declaration in this case?
` A I can't -- I can't recall.
` Q Was it -- was it more than three months
`ago?
` A Yeah. Again, I -- I just can't recall the
`exact date. The signature.
` Q Right. Do you see the -- on the --
` A Right.
` Q -- page 53 of your declaration, it -- it's
`dated June 3rd, 2022?
` A Right. Uh-huh.
` Q Looking at that, can you -- can you recall
`when before June 3rd, 2022 you were first contacted
`by the Mayer Brown attorneys to prepare this report?
` A No. I ca
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