Teleconference Proceedings - April 3, 2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` ___________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ___________________________
`
` APOTEX, INC.,
` Petitioner,
`
` v.
`
` UCB BIOPHARMA SPRL,
` Patent Owner.
`
` ___________________________
`
` U.S. Patent No. 8,633,194
` Inter Partes Review No.: IPR2019-00400
`
` ___________________________
`
` REPORT OF PROCEEDINGS via teleconference of
`
` the above-entitled cause before Judges Robert A.
`
` Pollock, Ryan H. Flax, and Kristi L.R. Sawert,
`
` Judges of said Panel, on the 3rd day of April 2020
`
` at the hour of 4:00 p.m. EST.
`
` Reported by: Sandra Rocca
`
` Certification No. 084-003435
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 001
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` ___________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ___________________________
`
` APOTEX, INC.,
` Petitioner,
`
` v.
`
` UCB BIOPHARMA SPRL,
` Patent Owner.
`
` ___________________________
`
` U.S. Patent No. 8,633,194
` Inter Partes Review No.: IPR2019-00400
`
` ___________________________
`
` REPORT OF PROCEEDINGS via teleconference of
`
` the above-entitled cause before Judges Robert A.
`
` Pollock, Ryan H. Flax, and Kristi L.R. Sawert,
`
` Judges of said Panel, on the 3rd day of April 2020
`
` at the hour of 4:00 p.m. EST.
`
` Reported by: Sandra Rocca
`
` Certification No. 084-003435
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 001
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`Teleconference Proceedings - April 3, 2020
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`Page 2
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` A P P E A R A N C E S:
`
` KATTEN MUCHIN ROSENMAN, LLP
` By: MR. JITENDRA MALIK
` MS. ALISSA PACCHIOLI
` 550 South Tryon Street, Suite 2900
` Charlotte, North Carolina 28202
`
` appeared on behalf of the
` Petitioner;
`
` FENWICK & WEST LLP
` By: MR. ROBERT COUNIHAN
` MR. JAMES TRAINOR
` MS. ERICA R. SUTTER
` 902 Broadway, Suite 14
` New York, New York 10010
`
` appeared on behalf of the
` Patent Owner.
`
` (All parties appeared via teleconference.)
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 002
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`Teleconference Proceedings - April 3, 2020
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` JUDGE POLLACK: Good afternoon. This
`
` hearing is for IPR2019-00400. I'm Judge Pollack.
`
` Judges Sawert and Flax are on the line as well. Who
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` do we have for Patent Owner UCB?
`
` MR. COUNIHAN: Good afternoon, Your Honor.
`
` This is Robert Counihan from Fenwick. Joined with
`
` me, not in person but they should be on the line,
`
` are lead counsel, James Trainor, and our associate,
`
` Erica Sutter.
`
` JUDGE POLLACK: Good afternoon,
`
` Mr. Counihan. Who is on the line for Petitioner
`
` Apotex?
`
` MR. MALIK: Good afternoon, Your Honor.
`
` This is Jitendra Malik from the law firm of Katten
`
` and with me is Alissa Pacchioli, also from the law
`
` firm of Katten.
`
` JUDGE POLLACK: Good afternoon as well. I
`
` understand there's a court reporter on the line,
`
` correct?
`
` CERTIFIED STENOGRAPHER: Yes, there is.
`
` JUDGE POLLACK: Very good. Petitioner shall
`
` file the transcript pursuant to the Trial Practice
`
` Guide as stated in the email of -- I believe it was
`
` earlier today.
`
` MR. MALIK: Yes, sir.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 003
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`
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`Teleconference Proceedings - April 3, 2020
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` JUDGE POLLACK: On April 2nd, Patent Owner
`
` sent us an email requesting a conference to discuss
`
` "immediate expungement" of certain portions of
`
` paper 43, Petitioner's motion to exclude. As we
`
` understand the email, Patent Owner believes the
`
` Petitioner failed to timely file objections to
`
` Dr. Niazi's declaration.
`
` Patent Owner, assuming for the sake of
`
` argument that your allegations are correct, why do
`
` you think it is necessary for the Panel to take this
`
` highly unusual step of expungement rather than
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` consider the matter in due course and in light of
`
` your opposition to Petitioner's motion?
`
` MR. COUNIHAN: Yes, Your Honor. Thank you
`
` very much for having a conference call on short
`
` notice like this. It's not just timeliness, it's
`
` also the detail of the objection and the form in
`
` which they were provided. The rule 37 42.64 is very
`
` clearly there to allow in this situation the Patent
`
` Owner the opportunity to correct any issues that the
`
` in the situation the Petitioner might object to.
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` And the way that Patent Owner handled this
`
` situation, in our view, has substantially prejudiced
`
` us. And so our belief is that given the numerous
`
` procedural defects, there's no reason to even
`
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 004
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`
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`Teleconference Proceedings - April 3, 2020
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` require my side to take the time to write up a
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` response or for the Board to expend judicial
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` resources considering the motion.
`
` JUDGE POLLACK: Won't we be expending
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` judicial resources to consider whether or not --
`
` this extraordinary measure of expunging a motion
`
` that's not been fully briefed?
`
` MR. COUNIHAN: I understand that, Your
`
` Honor. I think that the issues that we raised can
`
` be considered just based on the first sentence of
`
` their motion because they identified the source of
`
` the objection, which is just two parts of a
`
` deposition transcript where they essentially just
`
` read back the regulatory provision of the CFR that
`
` they moved under. And so the basis of their motion
`
` is that our expert withheld material from them and
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` as a result, his opinions are unreliable.
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` However, their objection made at the
`
` deposition did not identify that material that was
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` allegedly withheld. And then what they did from
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` there is they did not seek relief from the Board
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` immediately to file a motion to strike, which was
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` the motion they told us about at the deposition.
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` Nor did they file any written objections so that we
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` could then take appropriate action on our end.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 005
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`
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`Teleconference Proceedings - April 3, 2020
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` So as a result, when we saw their reply come
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` in six weeks after the deposition, we assumed that
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` they were doing what they should do, which is attack
`
` his credibility on the merits. Instead, they sat
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` until a week ago and then filed a motion to exclude
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` when we're at a point -- I'm sorry, not a week ago,
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` three days ago -- when we are now at a point where
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` we cannot correct anything. We can't put in a new
`
` declaration. We can't bring in a new expert. Our
`
` hands are basically tied. And we think the
`
` prejudice is so incredible that there's no reason to
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` entertain the motion and it should just be expunged
`
` immediately.
`
` JUDGE POLLACK: All right. Petitioner.
`
` MR. MALIK: So I kind of want to break this
`
` up. I want to discuss what I view the real issue is
`
` and the timing issue. I mean, we're not here Friday
`
` afternoon at 4:00 p.m. to discuss whether or not the
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` motion is under what we believe is 42.64(a) versus
`
` UCB thinking 42.64(b). And then I want to discuss
`
` certain procedural issues.
`
` You're right, Your Honors, it's a drastic
`
` remedy of trying to stop motion practice midstream.
`
` I mean, there has to be a pretty good reason beyond
`
` just a dispute over whether 64(a) or 64(b) applies.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 006
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`Teleconference Proceedings - April 3, 2020
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` And I think what we need to do is kind of go into
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` exactly what is the nature of the issue and why UCB,
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` you know, is so adamant that we immediately strike.
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` So this kind of goes into what the motion to
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` exclude effectively is about. The motion to
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` effectively exclude is some issue that happened
`
` during the Niazi deposition/declaration. There's an
`
` -- obviously he submitted a declaration, said
`
` certain things are obvious. Fine, I appreciate
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` that.
`
` But at the same time, there was a book, his
`
` own book, that he was editing at the same time while
`
` he submitted his declaration -- and you'll see it
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` all laid out on page 4 -- that, in effect, impeached
`
` just about every proposition that he had. We
`
` discuss the impeachment information in our complete
`
` response -- complete reply to Patent Owner's
`
` complete response.
`
` But what this motion is about is the
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` underlying facts of how much -- what he did, as far
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` as his review he actually in his deposition
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` transcript, he certified in words, he's been editing
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` his book that was going to come out one week after
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` the deposition. He repeatedly cites this book, but
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` he never, ever cites the book itself in the
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`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 007
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`Teleconference Proceedings - April 3, 2020
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` declaration. And so we actually found the book and
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` realized that it impeached everything. But
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` basically Patent Owner or Dr. Niazi withheld the
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` book.
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` And what happened was the reason we think
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` the deposition -- the objection is under 64(a) is we
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` need a good faith basis to object to anything. We
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` can't just object for the sake of objection. And
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` there's nothing in his deposition or in his
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` declaration that said, hey, I withheld this book. I
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` was drafting the book at the same time while I was
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` drafting my declaration. I didn't look at this
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` stuff.
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` So the objection itself only became ripe
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` during the actual deposition. And that's exactly
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` what we did. Once the deposition facts established
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` that he had indeed reviewed his book, he knew about
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` the content, we went ahead and put the objection in.
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` We said here's the CFR code. We even read it
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` directly into the record, the subsection of the CFR
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` code, that's on page 244 of the deposition
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` transcript -- I'm sorry, that's on 248 of the
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` deposition transcript. And in response, UCB says
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` and I will read it, "No, of course we disagree with
`
` your position and we'll respond accordingly at the
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`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 008
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`
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`Teleconference Proceedings - April 3, 2020
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` appropriate time."
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` They never said it wasn't timely. They
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` acknowledged the deposition. And if you think about
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` why the timing requirement is there, the timing
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` requirement is there such that UCB has the best
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` opportunity to cure. It puts the prejudice on them.
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` We were at the deposition. It was right before
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` redirect. The witness is right there. What would
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` be the -- that's the most fair way to do it because
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` they can ask their witness whatever they want.
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` So we actually are moving under 64(a). And
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` if you take a look at first line of our brief, it
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` says, pursuant to 37 CFR 42.64(c), which is the
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` general file motion to exclude, but there's
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` absolutely nothing here that says that we are moving
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` under (b). That's theirs. And we can have a fight
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` in the paper as to whether it's (a) or (b), that's
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` fine, and we can go ahead and brief that.
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` But what really is going on is this paper is
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` going to force UCB to explain what exactly happened.
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` Why did their expert not put the Niazi series into
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` the record in violation of -- we which said in the
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` record and it's all over our brief, the CFR
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` provisions -- bear with me one second, Your Honor.
`
` JUDGE POLLACK: Counsel, counsel, you are
`
`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 009
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`Teleconference Proceedings - April 3, 2020
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` breaking up. I suspect it's because there's
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` background noise in your office.
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` MR. MALIK: Is this a little better, Your
`
` Honor?
`
` JUDGE POLLACK: Yes.
`
` MR. MALIK: Okay. So basically we were
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` moving under 37 CFR 45.51(b)(1)(iii). We told them
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` that that was the basis. Now, what they don't want
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` to do is they don't want -- the reason they want an
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` immediate expungement -- and we'll get into the
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` drastic remedy that it is. They don't want to write
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` a paper which basically explains why their expert
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` withheld information. They don't want to say the
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` expert completely withheld information or he was so
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` derelict and negligent when he was doing his
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` declaration that it never occurred to him that the
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` book that he was editing at the same time could have
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` been used for impeachment and it was relevant.
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` So that's ultimately what this comes out to.
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` We had no basis at the time the declaration was
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` first served under 42.64(b) to know that he was
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` withholding information, that he was editing his
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` book at the same time, that he had a Word copy that
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` he searched. The deposition revealed that the
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` objection became ripe and we moved under 42.64 which
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`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 010
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`
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`Teleconference Proceedings - April 3, 2020
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` basically says a timely objection is during the
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` deposition.
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` Now, I do want to talk about the remedy
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` itself. They're asking for an expungement. Okay.
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` There is a rule that deals with expungement. It's a
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` sanction rule, 42.12(b)(2) expressly says --
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` basically an order for expungement. But if you want
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` to do sanctions, you have to then give a 21-day
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` notice. You have to basically use everything that
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` the rule requires, which is -- bear with me if I can
`
` find it. Here we are. They have to do what
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` 42.11(d)(2) said, which is essentially saying for
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` 21 days prior to authorization to file a motion for
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` sanctions, the moving party must serve the other
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` side, us, with the proposed motion.
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` So if they're looking for a remedy that is
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` akin to what is in 42.12, then they have to go
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` through the procedure of 42.11. And even 42.12
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` doesn't allow for immediate expungement. I mean,
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` we're basically having a debate right now whether
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` it's Section A or Section B of the objection
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` practice. And we can go ahead and brief that and
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` deal with it and the PTAB can take it under
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` advisement.
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` To the extent there is issues in the motion
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`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 011
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`Teleconference Proceedings - April 3, 2020
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`Page 12
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` or issues in the paper that the judges feel is not
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` appropriate or is not convincing, you're judges.
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` You can weigh the evidence. You can ignore it.
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` We're not talking about a jury. We're talking about
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` three judges. You're well used to basically
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` weighing evidence, considering which side is better.
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` All we're asking here is let the briefing go
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` forward, complete it, take it under advisement,
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` decide whatever you want to decide, and that's the
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` end of it.
`
` JUDGE POLLACK: Mr. Counihan, I understand
`
` from Petitioner that they discussed the credibility
`
` of your expert in their reply. So where is the
`
` prejudice of raising similar issues now in this
`
` motion?
`
` MR. COUNIHAN: Well, the prejudice would be
`
` if the motion were granted and our expert's entire
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` declaration were excluded because --
`
` JUDGE POLLACK: That would indeed be
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` prejudicial, but you do have the opportunity to
`
` oppose the motion.
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` MR. COUNIHAN: Understood, Your Honor. If I
`
` can make a couple comments in response to what
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` Mr. Jitendra said just there. He pointed to 42.12,
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` the sanctions provision. We would direct the Board,
`
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 012
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`Teleconference Proceedings - April 3, 2020
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` Your Honors, to 42.7 which allows the Board to
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` manage its own record and expunge inappropriate
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` papers such as, in our view, this one.
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` Two, in terms of what counsel believes we
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` will have to do if we have to respond, I wasn't
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` planning to go into the merits today, but we wholly
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` disagree that there's any inconsistency. As counsel
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` pointed out, the book that was allegedly withheld
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` from them is a book. It's a publicly available
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` document. It was also referenced in Dr. Niazi's
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` background in his declaration. So there was --
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` nothing was being hidden. Their point is that --
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` JUDGE POLLACK: Are you referring to
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` Exhibits 1032 to 1037 and 1041 that are the subject
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` of the opposing motion to exclude or is this
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` something else?
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` MR. COUNIHAN: No, that's exactly it, Your
`
` Honor. So in his -- Dr. Niazi in his declaration in
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` his background makes reference to this book series
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` because it's about manufacturing pharmaceutical
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` formulations. So there's a reference to it there.
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` So their argument as put forth in their
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` motion is there are four instances, a total of four,
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` that they believe he was impeached at his deposition
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` by his book, specifically 33 formulations taken out
`
`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 013
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`Teleconference Proceedings - April 3, 2020
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` of that book. We, (1), disagree on the merits that
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` there was any impeachment; but (2), they believe
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` that because of those four impeachments across, you
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` know, a 200-paragraph declaration, that his entire
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` declaration should be excluded.
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` And so they're asking for -- to circle back
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` to your original question, Your Honor, in the reply,
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` they focus on these four things and a couple other
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` things. But they focused on these few things. They
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` didn't focus on the entire thing -- the entire
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` declaration needs to go. This expert just needs to
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` be thrown out of this proceeding. That was not the
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` tenor of that reply and that's what they're saying
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` now.
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` And so we're going to be faced with the
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` situation where the Board may take the motion under
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` advisement and not issue an Order before the oral
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` argument on the 22nd, in which case we will be
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` arguing without knowing whether we can refer to our
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` expert or not.
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` I do think there is an interesting conundrum
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` that much of their reply is based upon Dr. Niazi's
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` book, but then they want to exclude him as
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` unreliable. I think there's an interesting
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` contradiction there, but that's something we can
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 014
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`Teleconference Proceedings - April 3, 2020
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`Page 15
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` talk about at the oral argument.
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` But bringing back to today's request and the
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` procedural issues, the concern that we have is that
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` we expected them to file a motion to strike back in
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` December. They didn't do that. We expected them if
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` they weren't going to do that, if they were going to
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` file a motion to exclude, to put us on notice with
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` filed written objections.
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` And Dr. Jitendra tried to say that this is a
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` 42.65(a) issue because that goes to deposition
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` evidence, but they're not trying to exclude his
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` deposition testimony. In fact, they're relying upon
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` it. They're relying upon it exclusively as a basis
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` for their motion.
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` What they're trying to exclude is his
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` declaration which is a written document, which
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` squarely falls under 42.64(b).
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` But even if you set aside that issue for a
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` moment, whether it's (a) or (b), the bottom line is
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` under 42.64, the point is to give notice to the
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` non-objecting party so that they can deal with it if
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` they so choose. And in this situation, they did not
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` give us that notice. They just said vaguely and
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` generically, we're going to move under this rule.
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` Okay. You're entitled to say that, but you need to
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 015
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`
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`Teleconference Proceedings - April 3, 2020
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`Page 16
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` tell us what he withheld, what specifically he
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` withheld and how is that inconsistent. You need to
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` tell us that and then we can go correct it. And
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` they simply failed to do that. And as a result,
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` their motion has absolutely no basis in any Board
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` rule or in the CFR, and in our view, should simply
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` be expunged.
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` MR. MALIK: May I respond?
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` JUDGE POLLACK: Hold on. This objection was
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` made during the deposition itself, correct?
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` MR. COUNIHAN: Correct.
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` JUDGE POLLACK: And we have the transcript
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` somewhere here, right?
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` MR. COUNIHAN: It's Exhibit 1043.
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` JUDGE POLLACK: Let's see if I can find this
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` here. Give me a second. I had a computer problem a
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` few minutes ago and it's taking me a minute to find
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` things. All right. Exhibit 1043, which page, line?
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` MR. COUNIHAN: They cite two provisions or
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` two sections: First, page 7. So this comes right
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` at the very beginning of the deposition. And I
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` believe it's Dr. Malik says, "Counsel, to the extent
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` Dr. Niazi says anything today that would support a
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` motion to strike, I will give you the full basis at
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` the end of the cross and that way you have the
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 016
`
`
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`Teleconference Proceedings - April 3, 2020
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`Page 17
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` opportunity to redirect him."
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` So there's nothing specific about what
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` they're planning to move to strike on at that point.
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` The second thing they cite is at page 247
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` which comes at the very end of the direct
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` examination or cross-examination. And let me know
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` when you're there, Your Honor.
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` JUDGE POLLACK: Very good. Go ahead.
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` MR. COUNIHAN: So here they cite -- they
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` refer to a couple of different things, but I believe
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` the part that is relevant to the motion to exclude
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` begins on page 248 at line 5 where they say,
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` "Dr. Niazi did not consider information that he has
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` in his possession that the POSA would have used."
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` And then, "On the basis of 37 CFR 42.51, which I
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` state in relevant part" and then he read 42.51 into
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` the record. And that was it. You can see
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` immediately thereafter Ms. Sutter on our team gave
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` the statement that Mr. Malik read into the record.
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` So those two quotes from the transcript are
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` the two objections that they say gave us sufficient
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` notice to be prepared for this motion to exclude.
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` JUDGE POLLACK: All right.
`
` MR. MALIK: May I respond?
`
` JUDGE POLLACK: Yes, please.
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 017
`
`
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`Teleconference Proceedings - April 3, 2020
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`Page 18
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` MR. MALIK: So first I want to go to
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` Rule 42.7 which is management of the record which
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` Patent Owner cited. (A) says the Board may expunge
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` any paper directed to a proceeding or filed while
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` the application is under the jurisdiction of the
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` Board that is not authorized under this court or in
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` the Board Order or filed to contrary to a Board
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` order. Basically this is a very unique motion where
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` someone just files a piece of paper without court
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` authorization. We do have authorization to file the
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` motion to exclude.
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` The sanctions provision which I read earlier
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` where it talks about expungement, that is
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` essentially what they're doing and they're saying
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` that a dispute between CFR 64(a) versus 64(b)
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` warrants an immediate expungement, something that
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` even the sanctions motions won't even contemplate,
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` putting aside the procedure there.
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` Next, as far as the objection, you can see
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` we specifically noted that we were going to move to
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` remove the entire Niazi declaration. We even named
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` the document on page 247. And it seems to me
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` counsel for Patent Owner just laid out what they
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` intend to oppose our (indecipherable).
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` If they believe there's some defect, whether
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`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 018
`
`
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`Teleconference Proceedings - April 3, 2020
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`Page 19
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` it's lack of specificity, lack of timing, the PTAB
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` sees these issues all the time. It's what the
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` motion practice is about. We raised a motion. They
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` basically said no, you're not right. It's untimely,
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` it's this, it's that, it goes to the weight. The
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` judges then take it under advisement and they make
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` their decision. This is a normal dispute between
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` what applies, (a) or (b), specificity, untimeliness
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` versus not timely. There's nothing irregular and
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` there certainly is nothing that justifies in effect
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` a sanction that warrants even immediate expungement
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` that not even the rules contemplate.
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` JUDGE POLLACK: Very well. I think we've
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` talked this out. I'm going to put you on hold and
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` discuss this with the Panel.
`
` MR. MALIK: Thank you, Your Honor.
`
` MR. COUNIHAN: Thank you, Your Honor.
`
` (Short recess.)
`
` JUDGE POLLACK: This is Judge Pollack.
`
` Mr. Counihan, are you there?
`
` MR. COUNIHAN: Yes, Your Honor.
`
` JUDGE POLLACK: Mr. Malik?
`
` MR. MALIK: Yes, sir.
`
` JUDGE POLLACK: Very good. We've reached a
`
` decision regarding the motion to -- or the request
`
`GregoryEdwards, LLC | Worldwide Court Reporting
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`
`Apotex (IPR2019-00400) Ex. 1051, p. 019
`
`
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`Teleconference Proceedings - April 3, 2020
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`Page 20
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` for immediate expungement. However, before we get
`
` to that, I would like to discuss Patent Owner's
`
` motion to exclude. And I understand -- where is
`
` that -- Mr. Counihan, that you're seeking to exclude
`
` Exhibits 1032 through 1037 and then 1041 which are
`
` chapters from Dr. Niazi's book, correct?
`
` MR. COUNIHAN: Yes, Your Honor.
`
` JUDGE POLLACK: And in the alternative,
`
` you've asked for us to take judicial notice of some
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` facts regarding the six-volume series from which
`
` those chapters are derived, correct?
`
` MR. COUNIHAN: Yes, Your Honor.
`
` JUDGE POLLACK: And how would we take
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` judicial notice of something that we really have not
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` seen or heard about until today?
`
` MR. COUNIHAN: Understood. So the issue
`
` with those volumes or with those exhibits is that
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` they are excerpts from a much larger -- they're
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` excerpts from a very large six-volume series book.
`
` JUDGE POLLACK: Understood.
`
` MR. COUNIHAN: So we objected that the
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` excerpts are incomplete because as you can see from
`
` Petitioner's reply, and even it comes up in their
`
` motion to exclude, they're trying to characterize
`
` Dr. Niazi's opinions as unreliable because of 33
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 020
`
`
`
`Teleconference Proceedings - April 3, 2020
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`Page 21
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` formulations. And so the point that we believe
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` should be made is that that needs to be taken in
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` context of the fact that there are thousands of
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` formulations. I believe he testified that there are
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` 2,000 formulations that are disclosed in those -- in
`
` those books.
`
` Now, in one of the -- in 1041, they actually
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` -- Apotex actually included the index so you can see
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` that there are four or 500 different formulations in
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` that one volume. So in our view -- maybe this is an
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` undisputed fact and that's the way that it should be
`
` handled, but under the appropriate rule for judicial
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` notice, we believe that there is enough evidence in
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` the record between Dr. Niazi's testimony and just
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` from the excerpts themselves that the context that
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` there are thousands of formulations is clear.
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` JUDGE POLLACK: So you don't think you need
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` to submit anything else to make the record clear for
`
` us as to the scope of this six-volume set?
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` MR. COUNIHAN: That's right. We don't want
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` to burden the Board with the other -- I'm not sure
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` how many other pages there are if Petitioner were to
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` go scan the rest of those books and put them into
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` evidence, which is why we suggested judicial notice
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` as an alternative because we're only asking for
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866-4Team GE
`
`Apotex (IPR2019-00400) Ex. 1051, p. 021
`
`
`
`Teleconference Proceedings - April 3, 2020
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`Page 22
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` judicial notice of a pretty specific, narrow fact
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` and not, you know, anything beyond that. So we're
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` really proposing that as an alternative kind of
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` compromise solution, if you will. I apologize if
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` that wasn't clear in the brief, Your Honor.
`
` JUDGE POLLACK: Okay. Petitioner.
`
` MR. MALIK: With respect to 1032 and 1034, I
`
` know we briefly discussed at the beginning. As
`
` Patent Owner said, yes, the Niazi series is
`
` referenced in his book, but Rule 45.51(b)(1)(iii)
`
` says unless previously served, a party must serve
`
` relevant information that is inconsistent with the
`
` position advanced by the party. Throughout the
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` proceeding, UCB should have served what it
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` expectedly envisioned as what has become 1032 to
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` 1037. So that's -- I mean, basically that became
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` part of this proceeding the minute Dr. Niazi served
`
` his declaration. It goes not only to UCB, but also
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` to persons involved in the preparation. You can see
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` in our motion how we've highlighted everything.
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` So the only portions of the Niazi series
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` that were relevant as far as that rule went was 1034
`
` to -- 1032 to 1037. Now, you'll see in our response
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` and obviously you'll see in the papers, to the
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` extent there's anything relevant in the rest of the
`
`GregoryEdwards, LLC | Worldwide Court Reporting
`GregoryEdwards.com | 866
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