IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Reg. No. 2,925,808 — REVLIMID
`Registered on February 8, 2005.
`
`TTAB
`
`“7tr%?@
`
`Cancellation No.
`
`Petitioner,
`
`Res ondent.
`
`PETITION TO CANCEL
`
`CENTOCOR, lNC., a Pennsylvania corporation, having a principal place of business at 244
`
`Great Valley Parkway, Malvem, Pennsylvania 19355 ("Petitioner"), believes that it is and will continue
`
`to be damaged by the registration of Reg. No. 2,925,808 — REVLIMID for "pharmaceutical preparations,
`
`namely, cytokine inhibitory drugs; pharmaceutical preparations that modulate the immune system";
`
`registered on February 8, 2005 by Celgene Corporation, a Delaware corporation, having a business
`
`address at 86 Morris Avenue, Summit, New Jersey 07901 (“Respondent”), and hereby petitions to cancel
`
`the same pursuant to Section 14 of the Trademark Act of 1946 (15 U.S.C. Sec. 1064).
`
`As grounds for this Petition, Petitioner states that:
`
`1.
`
`On October 29, 2003, Respondent filed a complaint against Petitioner in the United States
`
`District Court for the District of Pennsylvania, Civil Action Number 03-5978 (“the Federal Complaint”),
`
`alleging that Petitioner’s generic use of the “I.M.I.D.” acronym infringed its use of the term lMlDS.
`
`2.
`
`As a basis for its Federal Complaint and assertion of rights in the term llVllDS, Respondent
`
`alleged that it owns a family of HVIID marks, which includes Reg. No. 2,925,808 — REVLIMID.
`06/28/2005 SUILSONI 00000006 8925808
`3oo.oo op
`
`lllllll||ll||l|||ll|ll|||l|ll|||llllllllllllllllll
`
`06_24_2oQ5
`
`u.s. Patent & TMOtcITM Mail Rent Dt- #72
`
`01 FC:6401
`
`31 l39.771B
`
`DC\532458\3
`
`

`
`3.
`
`Respondent made false statements of fact when it executed and filed a Statement of Use
`
`and accompanying declaration in connection with application Ser. No. 78/188,450, which has matured
`
`into Reg. No. 2,925,808 — REVLIMID. A copy of the Statement of Use, executed by Respondent’s in-
`
`house counsel, Maria Pasquale,
`
`is attached as Exhibit A. A copy of the accompanying declaration
`
`(“Declaration”), also signed by Ms. Pasquale, is attached as Exhibit B.
`
`4.
`
`Respondent’s Statement of Use in connection with Ser. No. 78/188,450 — REVLIMID
`
`was filed on August 11, 2004. The Statement of Use claims use of the REVL11VIlD mark in interstate
`
`commerce to identify "pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceutical
`
`preparations that modulate the immune system" since June 3, 2004.
`
`5.
`
`Respondent’s Statement of Use represents that the REVLIMID mark “is used on labels,
`
`tags, the goods themselves, and in other ways customary in the trade.” Ex. A, Statement of Use 1[ 4.
`
`6.
`
`The specimen attached to the Statement of Use, however, does not demonstrate use of
`
`REVLIMID on labels, tags or the goods themselves, but instead shows use of the mark on trade show
`
`booth panels. See Ex. B, Declaration 1l 5. Ms. Pasquale’s accompanying Declaration thus was offered to
`
`explain how the REVLIMID mark nevertheless had been used in interstate commerce.
`
`7.
`
`Ms. Pasquale admitted, however, in an April 21, 2005 deposition that key statements in
`
`her sworn Declaration were false and misleading. Excerpts from this deposition (“Pasquale Dep.”) are
`
`attached as Exhibit C; (lines from these excerpts that are redacted have been designated as “confidential”
`
`by Respondent in pending litigation and thus are not included.)
`
`8.
`
`Ms. Pasquale, for example, begins the body of her Declaration with the statement that
`
`“Applicant has marketed and offered to sell its REVLIMID compounds to various potential purchasers,
`
`such as pharmaceutical companies.” Ex. B, Declaration 1] 4. This statement implied that REVLIl\/IID
`
`products were for sale in commerce and that pharmaceutical companies and others could buy them.
`
`DC\532458\3
`
`- 2 -
`
`

`
`9.
`
`In her deposition, however, Ms. Pasquale explained that the purpose of the trade show
`
`booths was not to make sales but to interest other pharmaceutical companies in becoming licensees of the
`
`REVLIMID product. See Ex. C, Pasquale Dep. at 202-203, 252. Thus, Respondent was not selling or
`
`offering to sell its REVLIMID product, but was courting business partners to enter into joint business
`
`ventures.
`
`10.
`
`Ms. Pasquale then attested in her Declaration that “Applicant attends various trade shows
`
`and has offered to sell its REVLIMID compounds at these shows. For example, the specimens submitted
`
`in support of the Statement of Use were panels on the booth used at the American Society of Clinical
`
`Oncology in New Orleans. Potential purchasers can purchase the REVLIMID compounds at the trade
`
`shows. These booths acted as sales counters for the Applicant’s products.” Ex. B, Declaration 1[ 5. These
`
`statements affirrnatively represented to the Patent and Trademark Office that Respondent had offered and
`
`was offering its REVLIMID products for sale at the trade show booths.
`
`11.
`
`But in her deposition Ms. Pasquale conceded that these representations were false. She
`
`recanted her sworn statement that Respondent’s trade show booths “acted as sales counters for the
`
`Applicant’s products”: “On reflection, I would have preferred that it said information counters. I agree that
`
`it was a bad choice to say sales counters.” Ex. C., Pasquale Dep. at 254-255, 257-258. She also admitted
`
`that no order forms or price lists were available at the trade show booths. Id. at 254. Potential consumers
`
`of the REVLIMID pharmaceutical preparations could not order or buy them at these booths;
`
`they could do
`
`no more than request product information. Id. at 252, 254.
`
`12.
`
`Ms. Pasquale also swore in her Declaration that “Applicant also offers for sale its
`
`REVLIMID compounds through slide presentations made to potential consumers.” Ex. B, Declaration 1] 6.
`
`This statement again affirrnatively represented, in support of registration, that Respondent was offering to
`
`sell its REVLIMID pharmaceutical to persons who required the drug.
`
`DC\532458\3
`
`- 3 -
`
`ml}
`
`

`
`13.
`
`This statement, however, was also false and misleading. Ms. Pasquale admitted that the
`
`purpose of the slide shows was not to get purchase orders for the REVLIMID product, but to secure
`
`business partners or licensees for the REVLIMID drug, and that “potential consumers” referred to were in
`
`fact other pharmaceutical companies. Ex. C., Pasquale Dep. at 256-257. Ms. Pasquale conceded that “[o]n
`
`reflection .
`
`.
`
`. I would prefer that [the declaration] said customers rather than consumers.” Id. at 257.
`
`14.
`
`In fact, when Respondent made these several representations of the availability for sale to
`
`consumers of the REVLIMID product subject to Reg. No. 2,925,808, the REVLIMID product had not been
`
`approved for sale by the United States Food and Drug Administration (“FDA”). Indeed, to this day the
`
`product has not received FDA approval. See Pasquale Dep. (Ex. C.) at 259. Accordingly, Respondent
`
`cannot lawfully sell or offer to sell REVLIMID pharmaceuticals to consumers.
`
`15.
`
`As Ms. Pasquale admitted in her Deposition, the purpose of Respondent’s trade show
`
`booths was not
`
`to act as “sales counters,” but merely to provide information about REVLIMID
`
`pharmaceutical preparations. Ex. C, Pasquale Dep. at 254-455.
`
`16.
`
`Providing information about a potential product without contemporaneously offering to sell
`
`the product itself is not sufficient to establish “use in commerce” of a mark.
`
`17.
`
`Because Respondent did not submit any specimens sufficient
`
`to demonstrate “use in
`
`commerce” of the REVLIMID mark, Reg. No. 2,925,808 is invalid.
`
`18.
`
`For the reasons set forth in the foregoing paragraphs 1- 17, Petitioner believes that it is
`
`and will continue to be damaged by Reg. No. 2,925,808 — REVLIMID, and therefore, files this petition
`
`to cancel it.
`
`WHEREFORE, Petitioner requests that this cancellation petition be sustained and that Reg. No.
`
`2,925,808 be canceled.
`
`DC\532458\3
`
`- 4 -
`
`

`
`A duplicate copy of this petition and our check to cover the $300 government filing fee are
`
`enclosed. Should additional fees be required, please charge them to the deposit account of Applicant’s
`
`counsel, No. 50-0573.
`
`Respectfully submitted,
`
`CENTOCOR INC.
`
`1 son M. Brow
`
`Norm D. St. Landau
`
`Christen M. English
`Drinker Biddle & Reath LLP
`
`1500 K Street, N.W., Suite 1100
`Washington, D.C. 20005
`Tel: (202) 842-8800
`Fax: (202) 842-8465
`
`Attorneys for Petitioner
`
`DC\532458\3
`
`

`
`Exhibit A
`
`DC\532458\3
`
`- 6 -
`
`

`
`A,,¢-1‘u-~»gn4
`
`]2:37pm
`
`From—cnzan O'Connor
`
`215-665-2013
`
`T-353
`
`P.UU3/U05
`
`F-383
`
`CELG—0334; 131765
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Serial No.:
`
`Mark:
`
`Celgene Corporation
`
`78/188,450
`
`REVLIMID
`
`Notice of Allowance Issue Date:
`
`September 30, 2003
`
`Box ITU
`FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Dear Sir:
`
`STATEMENT OF USE UNDER § 2.88
`
`Applicant requests registration of the above-identified trademark in the United States
`
`Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946, 15
`
`U.S.C. § 1051 et. s'eq., as amended. One specimen showing the mark as used in commerce is
`
`submitted with this statement.
`
`Applicant is using the mark in commerce on all the goods identified in the Notice of
`
`Allowance in this application.
`
`The mark was first used on the goods at least as early as February 19, 2004; was first
`
`used on connection with the goods in interstate commerce at least as early as June 3, 2004; and is
`
`now in use in such commerce. Applicant is also submitting herewith an additional Declaration
`
`describing the goods and how the mark is used on the goods.
`
`

`
`.l|
`
`.
`
`Aug-1.0-Z004
`
`12:37pm
`
`From-Cozan O'Connor
`
`215-685-2013
`
`T-353
`
`P.UU4/006
`
`F-383
`
`CELG-0334; 131765
`
`The mark is used on labels, tags, the goods themselves, and in other ways customary in
`
`the trade. One specimen showing the mark as actually used is presented herewith.
`
`The undersigned, being hereby warned that willful false statements and the like so made
`
`are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
`
`false statements may jeopardize the validity of the application or any resulting registration,
`
`declares that she is properly authorized to execute this Statement of Use on behalf of the
`
`applicant; that she believes the applicant to be the owner of the trademark sought to be
`
`registered; the trademark is now in use in commerce; and all statements made of her own
`
`knowledge are true and all statements made on information and belief are believed to be true.
`
` f/o 0%
`
` Maria E. Pasquale, Es
`Counsel
`
`Date
`
`

`
`

`
`

`
`Exhibit B
`
`DC\532458\3
`
`- 7 -
`
`

`
`
`
`Aw:-10-20U4l2:37pm
`
`From-Cozen O'Connor
`
`215'555"20l3
`
`T‘353
`
`P-0U5/U05
`
`5‘'333
`
`CELG-0334; 131765
`
`Serial No. 78/188,450
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Serial No.:
`
`Mark:
`
`Celgene Corporation
`
`78/188,450
`
`REVLIMID
`
`Notice of Allowance Issue Date:
`
`September 30, 2003
`
`Box RESPONSES
`NO FEE
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`Dear Sir:
`
`DECLARATION
`
`I, Maria E. Pasquale, Esq., declare that:
`
`1.
`
`I am counsel for the Applicant corporation, that the specimens that are submitted
`
`in support of the mark REVLIMID were in use in commerce prior to the expiration ofthe time
`
`allowed to the Applicant for filing a Statement of Use.
`
`2.
`
`Celgene Corporation, is an independent biopharmaceutical company engaged
`
`primarily in the discovery, development and commercialization of small molecule drugs for
`
`treatment of cancer and inflammatory diseases through gene regulation.
`
`3.
`
`Applicant's R.EVLlMlD compounds are novel, small molecule, analogs of
`
`Applicant’s THALOMID® compound and are designed to be more potent than Applicant’s
`
`THALOMID® compound and have demonstrated an improved safety profile in clinical trials
`
`when compared with Applicant's TI-IA.LOMlD® compound.
`
`

`
`
`
`A
`.98‘
`
`1'0 20“ I23,” mmc,,mo:c,,,,,,.,,
`'
`‘
`'
`
`215-B65-2013
`
`T-353 mus/one
`
`F-383
`
`CELG-0334; 131765
`
`Serial No. 78/188,450
`
`4.
`
`Applicant has marketed and offered to sell its REVLIMID compounds to various
`
`potential purchasers, such as pharmaceutical companies. Applicant also tests the effectiveness
`
`and corresponding side effects ofits REVLIMID compounds through clinical trials with various
`
`clinicians and drug candidates.
`
`5.
`
`Applicant attends various trade shows and has offered to sell its REVLIMID
`
`compound at these shows. For example, the specimens submitted in support of the Statement of
`
`Use were panels on the booth used at the American Society of Clinical Oncology in New
`
`Orleans. Potential purchasers can purchase the REVLIMID compounds at the trade shows.
`
`These booths acted as sales counters for the Applicant’s products. The REVLIMID mark was
`. prominently displayed in the booth along with other materials.
`
`6.
`
`Applicant also offers for sale its R.EVI.lMlD compounds through slide
`
`presentations made to potential consumers.
`
`Applicant declares that all statements made herein are uue and that all statements made
`
`on infonnation and belief are believed to be true; and fiirther that these statements are made with
`
`the knowledge that willful false statements and the like so made are punishable by fine or
`
`imprisonment, or both, under Section 1001 ofTitle 18 of the United States Code and that such
`
`willful false statements mayjeopardize the validity of this application and any registration
`
`resulting therefrom.
`
`S/OW
`
`Date
`
`

`
`Exhibit C
`
`DC\532458\3
`
`- 8 -
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`CELGENE CORPORATION,
`
`CIVIL ACTION
`
`Plaintiff,
`
`CENTOCOR,
`
`INC.,
`
`Defendant.
`
`: NO.
`
`03-CV—5978—RB
`
`April 21, 2005
`
`Oral deposition of MARIA
`
`PASQUALE, ESQUIRE,
`
`taken pursuant
`
`to
`
`notice, was held at
`
`the law offices of
`
`Drinker Biddle & Reath, LLP, One Logan
`
`Square, 18th and Cherry Streets
`
`I
`
`Philadelphia, Pennsylvania, beginning at
`
`12:39 p.m., on the above date, before
`
`Kristy L. Liedtka,
`
`a Professional Court
`
`Reporter and Notary Public in and for the
`
`Commonwealth of Pennsylvania.
`
`ESQUIRE DEPOSITION SERVICES
`
`15th Floor
`
`1880 John F. Kennedy Boulevard
`
`Philadelphia, Pennsylvania 19103
`
`(215) 988-9191
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`

`
` 1 APPEARANCES:
`NO. DESCRIPTION
`PAGE
`Pasquale-9 Actimid Transmittal 260
`
`COZEN O'CONNOR
`CELG08793—08798
`
`BY: CAMILLE M. MILLER, ESQUIRE
`1900 Market Street
`Philadelphia, Pennsylvania 19103
`(215) 665-2000
`Representing the Plaintiff
`
`
`
`Pasquale—10 IMIDS Transmittal
`CELG08731—08744
`
`269
`
`4
`
`
`
`Pasquale-11 Celgene Corporation's 273
`Objections and
`Responses to Centocor,
`Inc.'s First Set
`
`5 6
`
`
`
`4
`
`
`
`5
`
`
`
`
`
`
`
`
`DRINKER BIDDLE & REATH, LLP
`8
`BY: WILSON M. BROWN, III, ESQUIRE
`and
`NORM D. St. LANDAU, ESQUIRE
`9
`One Logan Square
`18th and Cherry Streets
`Philadelphia, Pennsylvania 19103
`(215) 988-6996
`brownwm@dbr.com
`Representing the Defendant
`
`10
`11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`8
`9
`10
`11
`12
`
`7
`
`8
`
`9
`10
`
`Of Interrogatories
`Pasquale—12 Celgene Web site
`Investor Relations
`CELG12393
`
`.
`290
`
`DEPOSITION SUPPORT INDEX
`
`Direction to Witness Not to Answer
`Page Line
`Page Line
`Page Line
`152 5
`
`Request for Production of Documents
`Page Line
`Page Line
`Page Line
`69 9
`17
`102 2
`98
`112 3
`119 19
`172 16
`179 22
`202 2
`262 10
`266 12
`277 19
`287 3
`302 13
`
`Stipulations
`Page Line
`6
`1
`
`Page Line
`
`Page Line
`
`Question Marked
`
`Page Line
`None
`
`Page Line
`
`Page Line
`
` (J1-l>UJl\J>—‘
`Sgkoooxiox
`
`INDEX
`
`
`Testimony of: MARIA E. PASQUALE, ESQUIRE
` By Mr. Brown
`
`6 E
`
`
`XHIBITS
`
`DESCRIPTION
`NO.
`Pasquale-1 Statement of Use
`IMIDS
`CELG08673—08681
`
`"PAGE
`140
`
`
`
`
`
`12
`
`
`
`
`
`
`
`13 Pasquale-2 1997 Annual Report
`CELG01244-01283
`
`160
`
`15
`
`
`
`
`11
`Pasquale-3 Office Action
`185
`CELG08670-08671
`12
`
`187
`16 Pasquale-4 Office Action
`
`
`CELG08662-08664
`
`
`Pasquale-5 IMIDS Declaration
`189
`
`
`CELG08634-08639
`18
`
`
`19 Pasquale-6 Protocol
`CDC~501—ST—0O3
`CELG11364—11433
`Pasquale-7 Investigators
`Brochure CC-4047
`CELG11434-11509
`22
`Pasqua|e—8 Revlimid Transmittal 247
`23
`
`CELG0875908764
`
`
`
`
`
`
`
`
`
`
`20
`21
`
`
`
`
`
`211
`
`215
`
`14
`15
`16
`17
`18
`19
`20
`2104
`
`
`Esquire Deposition Services
`
`2
`
`(Pages 2
`
`to 5)
`
`

`
`(It is hereby stipulated and
`agreed by and between counsel that
`sealing, filing and certification
`are waived; and that all
`
`objections, except as to the form
`of the question, will be reserved
`until the time of trial.)
`
`MARIA E. PASQUALE, ESQUIRE
`
`after having been duly sworn, was
`examined and testified as follows:
`
`\OOO\lO\Ul-DU-)t\)1—‘
`
`EXAMINATION
`
`BY MR. BROWN:
`
`Q. Would you please state your
`full name for the record?
`
`A. Maria Elena Pasquale.
`
`Q. My name is Wilson Brown. I
`represent Centocor in a case that's been
`filed by Celgene Corporation against
`Centocor in the District Court for .the
`
`Eastern District of Pennsylvania.
`We've asked for your
`deposition here today to ask you some
`questions about that case. I understand
`you're employed by Celgene?
`A. That's correct.
`
`Q. What is your title?
`A. Vice president legal, chief
`counsel.
`
`Q. Let me just lay down some
`simple ground rules for you, Ms.
`Pasquale. I'll be putting questions to
`you, I'd appreciate it if you'd wait
`until I finish my question before you
`answer.
`I will try to keep the questions
`to the point and give you a chance to
`hear them before you answer, but try not
`to talk over my questions, if you could.
`Secondly, if at any time you
`don't understand my question, please let
`
`1 2 3 4 5 6 7 8 9
`
`me know, I'll try to rephrase it. We
`want to be sure you understand the
`questions that are put to you before you
`answer them. So if at any time you're
`not clear on what I'm asking, please let
`me know. I'll try to restate it for you.
`If you answer my question, I'm going to
`assume that you've heard it and that yo
`understood it and that you're answering
`it to the best of your ability. Is that
`fair enough?
`A. Yes.
`
`Q. Thirdly, if at any time you
`wish to consult with Ms. Miller, please
`let me know, and you'll have an
`opportunity to do that. Okay?
`A. Yes.
`
`Q. Finally, we'll try to take a
`break every hour or so just to let people
`stretch and clear their heads. Okay?
`A. Yes.
`
`Q. Have you ever been deposed
`before, Ms. Pasquale?
`A. N0.
`
`MR. BROWN: Off the record
`for one second.
`
`(A discussion off the record
`occurred.)
`BY MR. BROWN:
`
`Q. Ms. Pasquale, can you tell
`me your educational background beginning
`with college?
`I
`A.
`Stony Brook University.
`graduated with a degree in biochemistry
`in 1986. Iwent to law school in 1988,
`graduated in 1992. Brooklyn Law School.
`Q. Okay. When did you enroll
`in Stony Brook?
`A.
`1982.
`
`Q. Did you enroll in Stony
`Brook immediately after completing high
`school?
`A. Yes.
`
`Q. Okay. Do you have a B.S.
`from Stony Brook? Is that the nature of
`your degree?
`A. Yes.
`
`24
`
`Q. Now, after you graduated
`
`3
`
`(Pages 6
`
`to 9)
`
`Esquire Deposition Services
`
`

`
`MARIA E. PASQUALE, ESQUIRE
`
`10
`
`12
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`13
`14
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`15.
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`\-OO0\lO\(./14>-U)[\)|—|
`
`\OOO\]O\U1-l‘—laJI\)>#
`
`from Stony Brook, where were you first
`employed?
`A. Cold Spring Harbor
`Laboratory.
`Q. And where is that?
`A.
`In Long Island.
`Q. How long were you employed
`there?
`
`A. Two years.
`Q. That would have been from
`1986 until you enrolled in law school?
`A.
`I went to another lab after
`
`that.
`
`Q. Oh, okay. In what sort of
`research was the Cold Spring Harbor
`Laboratory engaged?
`A. Adenovirus.
`
`Q. What was it researching
`about adenovirus?
`A. Back then a lot less was
`
`understood about transformation of cells
`and we studied the effects on DNA.
`
`Q. And what was your position
`at the lab?
`
`I don't recall my specific
`A.
`title, but it was in the area of lab
`technician.
`
`Q. Did your position ever
`change during that two years you were at
`Cold Spring Harbor Lab?
`A. No.
`
`Q. Was the lab organized into
`research teams or groups?
`A. Yes.
`
`Q. Were you assigned to a
`particular team or group?
`A. The structure was such that
`
`it was very basic research, not
`commercial.
`It was indirectly under --
`in the lab of James Watson and I reported
`directly to a post doc for James Watson.
`Q.
`Is the Cold Spring Harbor
`Lab affiliated with any other entity?
`A.
`I couldn't be certain of
`
`that nowadays.
`Q. Was it at the time you were
`there?
`A. No.
`
`;:.'-‘t..;-;
`
`§‘\—\......~
`
`Q. Was the adenovirus research
`you were engaged in undertaken on behal
`of any other entity?
`A.
`I don't know.
`
`Q. Why did you leave the employ
`of Cold Spring Harbor Lab in 1988?
`A.
`It was far from my home and
`I received a job offer much closer.
`Q. And what was thatjob offer?
`A. Assistant research scientist
`at the Institute of Basic Research in
`Staten Island.
`
`Q. And what was the institute
`researching?
`A. Genetic work.
`
`Q. How long did you work at the
`institute?
`
`Five years.
`A.
`Q. Would that take us through
`1993?
`
`I -- actually, I left in --
`A.
`maybe it was four years.
`I worked there
`until 2001 —— I'm sorry, 1991.
`I
`attended law school at night.
`
`Q. What was the nature of your
`work at the institute?
`
`A. Basic genetic research.
`Q. Was this on the human
`
`genome?
`A. Yes. Yes.
`
`Q. Other animal genomes?
`A. At times.
`
`Q. Were there particular facets
`of human and animal genomes that you wer :
`focused on?
`
`Fragile X syndrome.
`A.
`Q. Any others?
`A. That was the primary one.
`Q. Okay. What is Fragile X
`syndrome?
`A. The most common cause of
`retardation.
`
`Q. And that is an abnormality
`in an X chromosome?
`A. Uh—huh. Yes.
`
`Q. You said you attended the
`Brooklyn Law School at night?
`A. Uh—huh.
`
`Esquire Deposition Services
`
`4
`
`(Pages 10 to 13)
`
`

`
`MARIA E. PASQUALE, ESQUIRE
`
`I believe I heard you
`Q.
`earlier to say you started in 1988 with
`your night studies and completed your
`work at the law school in 1992; is that
`right?
`Standard four-year program.
`A.
`Q. And that was all done at
`night?
`A. Yes.
`
`Q. All right. In the period
`1991 to '92, were you still working at
`the institute?
`
`For part of the year. In
`A.
`1991 I became a summer associate.
`
`Q. Was that at a law firm?
`A. Yes.
`
`Q. Let me focus on your law
`school studies for a moment. Did you
`ever take any courses in trademark law
`when you were in law school?
`A.
`I believe I took one.
`
`Q. Okay. What was the title of
`that course?
`A.
`I don't recall.
`
`15
`
`Q. Was it strictly devoted to
`trademark law or did it also cover other
`
`subjects?
`A.
`I believe it was trademarks
`
`exclusively, but I don't recall it
`entirely.
`Q. Did you take any courses in
`food and drug law when you were at
`Brooklyn Law School?
`A. No.
`
`Q. Did you ever have any
`occasion in law school to study the Food,
`Drug and Cosmetics Act?
`A.
`I don't believe so.
`
`Q. You said you worked as a
`summer associate?
`A. Uh-huh.
`
`In 1991?
`Q.
`A. Yes.
`
`Q. Where were you a summer
`associate?
`
`A.
`
`Pennie & Edmonds.
`
`Q. Was this in New York City?
`A. Yes.
`'
`
`4>.wN—o\ooo\ioxu14>L»m»—-o\O°°\l0\U‘4>-“°N"
`[\,)[\)[\)[\)[\)l-|)—*!—*l—4h-il—*l-4)-ll—‘l—"
`
`§BBBBEES3GE$SSSwm<mmew-
`
`0O\lO‘\U1-l>U)l\JP-
`
`16
`
`Q. Now, after you finished your
`work as a summer associate at Pennie &
`
`Edmonds, did you return to the institute?
`A. No.
`
`Q. Did you have any employment
`following your summer tenure at Pennie J‘
`Edmonds?
`
`I worked part-time as a law
`A.
`clerk at Pennie & Edmonds.
`
`Q. And following graduation
`from Brooklyn Law School, did you work
`full-time at Pennie & Edmonds?
`
`A. Yes. Starting that
`September.
`Q. How long did you work for
`Pennie & Edmonds full-time?
`A.
`I worked there full-time
`until 1995.
`
`Q. Okay. Thereafter did you
`work at Pennie & Edmonds part-time?
`A. Yes.
`
`Q. For how long?
`A.
`I left —- I had taken
`
`various time off throughout that period.
`
`I left Pennie & Edmonds in 2001.
`
`Q. When you say, "throughout
`that period", do you mean from the period
`1995 through 2001?
`A. Yes.
`
`Q. Now, was the part-time
`arrangement in connection with child
`rearing?
`A. Yes.
`
`Q. Any other reasons you were
`taking time off besides child rearing?
`A. No.
`
`Q. Now, when you were at Pennie
`& Edmonds, did you ever deal with any
`trademark matters?
`A.
`I had no direct
`
`responsibility in the trademark area.
`Q. Where were your direct
`responsibilities?
`
`In the biotech group
`A.
`relating to patents.
`Q. Did you ever receive any
`training at Pennie & Edmonds in trademar
`law?
`
`5
`
`(Pages 14 to 17)
`
`Esquire Deposition Services
`
`

`
`MARIA E. PASQUALE, ESQUIRE
`
`20
`
`Orange Book, they need to certify against
`A. No.
`1
`Q. How about in patent law?
`2
`that patent and state that it's either
`
`not infringed or the patent is invalid.
`3
`Q. Any other matters that you
`4
`5 were involved in -- any other matters you
`6
`handled while you were at Pennie &
`7 Edmonds that involved the FDA, other than
`
`
`
`
`
`A. Occasional internal
`seminars.
`Q. Other than the seminars, was
`it on-the-job training as to patent law?
`A. Yes.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`
`2 3 4 5
`
`6 7 8 9
`
`to the patent bar?
`A. Yes.
`
`Q. When were you admitted to
`the patent bar?
`A.
`I believe it was 1993.
`
`Q. Now, were there any courses
`you took to prepare for admission to the
`patent bar?
`A. Yes. There's a standard
`
`preparation course.
`10
`Q. And then an examination you
`11
`12 would take?
`13
`A. Yes.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`trials?
`
`Primarily product liability.
`A.
`Q. What topics do you recall
`were discussed at the courses on
`
`liability as to clinical trials that you
`mentioned a moment ago?
`A. The process of clinical
`trials to some extent and the law —— the
`
`case law involving clinical trials.
`Q. And this case law had to do
`chiefly with drug maker's potential
`liability to those involved in the
`clinical trial?
`A. Yes.
`
`Q. To what state bars are you
`admitted?
`
`\OOO\]O'\Ul-¥>L+)I\)*-‘
`
`10
`11
`12
`13
`14
`
`15
`16
`
`A. New York and New Jersey.
`17
`Q. When were you admitted in
`18
`19 New York?
`20
`A.
`1993.
`
`21
`22
`23
`
`Q. How about New Jersey?
`A.
`I believe it was December
`of 2000 —- 1992.
`
`Q. Are you still a member in
`
`
`
`Q. When you were at Pennie &
`14
`15 Edmonds, did you ever have any occasion
`16
`to handle any matter that involved the
`17 Food and Drug Administration?
`18
`A.
`Insofar as Paragraph IV
`19
`litigations for generic drugs.
`20
`Q. What is a Paragraph IV
`21
`litigation for generic drugs?
`22
`A. When a generic company wants
`23
`to market an approved drug, if there are
`patents listed in something known as the
`
`Esquire Deposition Services
`
`6
`
`(Pages 18 to 21)
`
`’
`
`'1
`
`_
`
`1’
`
`
`
`~‘~-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the Paragraph IV matters you just
`described?
`A. No.
`
`Q. Have you ever attended any
`continuing legal education programs on
`the subject of trademark law?
`A. Not that I can specifically
`recall.
`
`Q. How about in food and drug
`law, have you ever attended any
`continuing legal education programs in
`food and drug law?
`A.
`I have gone to certain ones
`relating to liability with clinical
`trials.
`
`Q. What do you mean by
`liability with respect to clinical
`
`1
`
`2
`
`3
`4
`5
`6
`7
`
`
`
`
`
`
`
`
`
`8
` KO
`
`r—- O
`
` p_L p_l
`
`>—t>--bJl\)
`1-‘ -J>-
`
`
`
`
`
`
`
`
` I-‘I-‘G\UI
` r— \l
`
`1-‘!-*xooo
` I\.)©
`N >—t
`
` [Ul\J
`l\)L»)
`
` tx)-Ik
`
`
`
`Q. And you said you didn't have
`8
`any direct responsibility for trademark
`9
`10 matters, did you have any indirect
`11
`responsibility for those matters?
`12
`A. No. What I meant was thatl
`
`13 may have occasionally been asked to look
`14
`at case law relating to something more of
`15
`a —- not a substantive matter for
`
`16
`17
`18
`
`trademarks, but more of a summary
`judgment type issue or procedural issue.
`Q. Would those have been
`
`research assignments?
`19
`A. Very basic research
`20
`assignments.
`21
`Q.
`See, you're on my turf now.
`22
`23 We're not talking about the human genome.
`Now, were you ever admitted
`
`

`
`MARIA E. PASQUALE, ESQUIRE
`
`\OOO\lO'\U1-l>~UJI\J¥—‘
`
`1
`2
`
`3
`4
`5
`
`6
`7
`8
`
`9
`10
`11
`12
`13
`14
`
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`\OOO\lO\U1-{>0-)i\)P-‘
`
`good standing of both of those bars?
`A. Yes.
`
`Q. Have you ever been the
`subject of any disciplinary complaint?
`A. No.
`
`Q. Have you ever been the
`subject of any disciplinary proceedings?
`A. No.
`
`Q. Are you admitted to the bar
`of any federal court?
`A. The Federal Circuit, New
`Jersey, District of New Jersey and I
`believe the Southern District of New
`York.
`
`Q. Are you still a member in
`good standing of the bars of those
`federal courts?
`A. Yes.
`
`Q. Now, you mentioned you're a
`member of the patent bar, are there any
`other bars of which you're a member tha
`we haven't spoken?
`A. No.
`
`Q. Other than the Paragraph IV
`
`23
`
`litigation you mentioned, did you have
`any responsibility for any litigation
`matters when you were at Pennie &
`Edmonds?
`
`A. Are you asking if I was
`involved in other litigation other than
`Paragraph IV?
`Q. Yes.
`A. Yes.
`
`Q. What other kinds of
`litigation were you involved with?
`A.
`Patent litigation, patent
`infringement.
`Q. Any others?
`A. No.
`
`Q. Okay. How much of your time
`was devoted to patent litigation?
`A. About 80 percent up until
`about 1995.
`
`Q. Now, do you distinguish --
`when you say, "patent litigation", are
`you including patent prosecutions in the
`patent and trademark office?
`A. No.
`
`Q. You're referring to court
`lawsuits?
`A. Yes.
`
`So 80 percent of your time
`Q.
`was devoted to lawsuits filed in court,
`at least up until 1995?
`A. Yes.
`
`Q. When you went on a part-time
`basis, approximately how much of the tim-
`that you put in at the firm was devoted
`to patent litigation?
`A. Zero.
`
`Q. Okay. What did your work
`concentrate in when you were on a
`part-time basis?
`A.
`Patent prosecution.
`Q. When you were involvedtwith
`patent litigation, did you ever have
`occasion to take any depositions?
`A. Not -— no.
`
`Q. Did you ever have occasion
`to brief any summary judgment motions?
`A. Yes.
`
`Q. Did you ever have occasion
`
`25
`
`to submit affidavits in support of those
`motions?
`
`A. To prepare them?
`Q. Yes.
`A. Yes.
`
`Q. Okay. Were you ever
`involved in any efforts to seek
`preliminary injunctive relief in a patent
`litigation?
`A. No.
`
`Q. When you prepared affidavits
`in summary judgment motions -- let me
`withdraw that.
`
`How did you go about
`preparing affidavits in summary judgmen
`cases?
`
`A. As I'm sure you can imagine,
`most patent litigation is very involved
`and very intensive.
`It generally
`involves a team of attorneys.
`I was a
`junior associate and I might look through
`documents and assist with the technical
`aspects.
`Q. Well, was it part of your
`
`7
`
`(Pages 22 to 25)
`
`Esquire Deposition Services
`
`

`
`MARIA E. PASQUALE,
`
`ESQUIRE
`
`Q. Provided that -- if, in
`
`fact, they contain any references to the
`term IMIDs. We don't need them if they
`
`don't. We'll just get a stipulation that
`theydon%.
`
`Paragraph 4 states that,
`"Applicant has marketed and offered to
`sell its IMIDS compounds to various
`potentkd purchasers" «
`A. Ym.
`
`-- "such as pharmaceutical
`Q.
`companies."
`A \%s
`
`Q. Doymiweflmfi
`A \%s
`
`Q. What potential purchasers
`are referred to?
`Ix. Licensees.
`
`Esquire Deposition Services
`
`52
`
`(Pages 202 to 205)
`
`

`
`MARIA E.
`
`PASQUALE , ESQUIRE
`
`constituting a declaration?
`A. Wait. I'm sorry. Let me
`make sure.
`I thought that was the page
`you referred me to.
`Q.
`I'm sorry. There was two
`pages I was referring you to.
`A. Oh, okay.
`Q. One is 61 and the other is
`
`63.
`
`A. Yes.
`
`Q. Now, the statement of use
`bears the date 8/10/04?
`A. Yes.
`
`Q. Right. And the declaration
`bears the same date, correct?
`A. Yes.
`
`Q. The statement of use for
`Revlimid, the mark Revlimid, states that
`"The mark was first used on the goods at
`least as early as February 19, 2004."
`A. Yes.
`
`Q. Do you see that statement?
`What was the basis for that
`statement?
`
`2 4 9
`
`A. That we had used the term on
`
`various types of documents and items at
`that point.
`Q. What types of documents and
`items was the term Revlimid used on at
`
`that point?
`A.
`For example, the one that's
`attached to the declaration.
`
`Q. And the one that's attached
`to the declaration is another booth
`
`A. Yes.
`
`Q. Ms. Pasquale, does this
`chart in any way associate the drug
`Thalomid with the mark IMID?
`A. Associate?
`
`Q. Yes.
`A.
`I guess it depends on what
`you mean by association, but they are
`
`proceed IMIDs.
`Q. And Thalomid is set out
`separately from IMIDs, correct?
`A. Uh-huh.
`
`Q. Yes? Is that a yes?
`A. Yes.
`
`Is it inevitable that a
`Q.
`person looking at this chart, 8639, would
`associate IMIDs with Thalomid?
`
`MS. MILLER: Objection.
`She's not going know what a person
`is thinking.
`MR. BROWN: I'm just asking
`her --
`
`THE WITNESS:
`
`I don't know
`
`it's inevitable, but -— I don't
`
`know. Yes -— some yes probably,
`some no.
`,
`MR. BROWN: Can you mark
`this as Exhibit 8.
`
`(Pasquale—8 marked for
`identification.)
`BY MR. BROWN:
`
`Q. For the record, we've marked
`as Exhibit 8 a document that bears Bates
`
`1 2 3 4 5 6 7 8 9
`
`10
`11
`12
`
`13
`14
`15
`16
`17
`
`18
`19
`20
`21
`22
`23
`24
`
`OO\]O\LlI-J>-UJIQP‘
`
`Number Celgene08759 to 08764. It appear
`to be a transmittal on a statement of use
`
`panel?
`A. Yes.
`
`under Section 2.88 with respect to the
`mark Revlimid.
`
`Ms. Pasquale, have you had a
`chance to glance through this exhibit?
`A. Yes.
`
`Is this your signature that
`Q.
`appears on page 08761, the second page of
`the stat