Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. et al

Filing 95

Declaration of Michelle S. Rhyu in Support of 92 MOTION for Summary Judgment Counterclaim Defendants Stanford University, Dr. Merigan and Dr. Holodniy's Notice of Motion and Motion for Summary Judgment Declaration of Michelle S. Rhyu in Support of Counterclaim Defendants Stanford University, Dr. Merigan and Dr. Holodniy's Motion for Summary Judgment filed byBoard of Trustees of the Leland Stanford Junior University. (Attachments: # 1 Exhibit Exhibit A# 2 Exhibit Exhibit B# 3 Exhibit Exhibit C# 4 Exhibit Exhibit D# 5 Exhibit Exhibit E# 6 Exhibit Exhibit F# 7 Exhibit Exhibit G# 8 Exhibit Exhibit H# 9 Exhibit Exhibit I# 10 Exhibit Exhibit K# 11 Exhibit Exhibit L# 12 Exhibit Exhibit M# 13 Exhibit Exhibit N# 14 Exhibit Exhibit 1# 15 Exhibit Exhibit 5# 16 Exhibit Exhibit 7# 17 Exhibit Exhibit 12# 18 Exhibit Exhibit 13# 19 Exhibit Exhibit 15# 20 Exhibit Exhibit 16# 21 Exhibit Exhibit 23# 22 Exhibit Exhibit 24# 23 Exhibit Exhibit 25# 24 Exhibit Exhibit 28# 25 Exhibit Exhibit 29# 26 Exhibit Exhibit 30# 27 Exhibit Exhibit 31# 28 Exhibit Exhibit 34# 29 Exhibit Exhibit 35# 30 Exhibit Exhibit 39# 31 Exhibit Exhibit 41# 32 Exhibit Exhibit 46# 33 Exhibit Exhibit 87# 34 Exhibit Exhibit 123# 35 Exhibit Exhibit 351# 36 Exhibit Exhibit 352# 37 Exhibit Exhibit 356# 38 Exhibit Exhibit 369# 39 Exhibit Exhibit 518 PART 1 of 5# 40 Exhibit Exhibit 518 PART 2 of 5# 41 Exhibit Exhibit 518 PART 3 of 5# 42 Exhibit Exhibit 518 PART 4 of 5# 43 Exhibit Exhibit 518 PART 5 of 5# 44 Exhibit Exhibit 525# 45 Exhibit Exhibit 536# 46 Exhibit Exhibit 537# 47 Exhibit Exhibit 550 PART 1 of 4# 48 Exhibit Exhibit 550 PART 2 of 4# 49 Exhibit Exhibit 550 PART 3 of 4# 50 Exhibit Exhibit 550 PART 4 of 4# 51 Exhibit Exhibit 554# 52 Exhibit Exhibit 554A# 53 Exhibit Exhibit 555# 54 Exhibit Exhibit 556# 55 Exhibit Exhibit 601# 56 Exhibit Exhibit 602# 57 Exhibit Exhibit 640# 58 Exhibit Exhibit 681# 59 Exhibit Exhibit 684# 60 Exhibit Exhibit 686 PART 1 of 2# 61 Exhibit Exhibit 686 PART 2 of 2# 62 Exhibit Exhibit 692# 63 Exhibit Exhibit 693 PART 1 of 2# 64 Exhibit Exhibit 693 PART 2 of 2# 65 Exhibit Exhibit 694# 66 Exhibit Exhibit 695# 67 Exhibit Exhibit 696# 68 Exhibit Exhibit 697# 69 Exhibit Exhibit 698# 70 Exhibit Exhibit 699# 71 Exhibit Exhibit 700# 72 Exhibit Exhibit 701# 73 Exhibit Exhibit 702)(Related document(s)92) (Rhyu, Michelle) (Filed on 10/27/2006)

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Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. et al Doc. 95 Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 1 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O COOLEY GODWARD KRONISH LLP STEPHEN C. NEAL (No. 170085) (nealsc@cooley.com) RICARDO RODRIGUEZ (No. 173003) (rr@cooley.com) MICHELLE S. RHYU (No. 212922) (mrhyu@cooley.com) Five Palo Alto Square 3000 El Camino Real Palo Alto, CA 94306-2155 Tel: (650) 843-5000 Fax: (650) 857-0663 Attorneys for Plaintiff and Counterclaim Defendant, THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY and Counterclaim Defendant THOMAS MERIGAN UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY, Plaintiff, v. ROCHE MOLECULAR SYSTEMS, ET AL., Defendants. ROCHE MOLECULAR SYSTEMS, ET AL., Counterclaimants, v. THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR UNIVERSITY; THOMAS MERIGAN AND MARK HOLODNIY Counterclaim Defendants. Case No. C 05 04158 MHP DECLARATION OF MICHELLE S. RHYU IN SUPPORT OF COUNTERCLAIM DEFENDANTS STANFORD UNIVERSITY, DR. MERIGAN AND DR. HOLODNIY'S MOTION FOR SUMMARY JUDGMENT RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Dockets.Justia.com Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 2 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O I, Michelle S. Rhyu, declare as follows: 1. I am an attorney with the law firm of Cooley Godward Kronish LLP, counsel of record for The Board of Trustees of the Leland Stanford Junior University and Thomas Merigan in the above-captioned matter. I have knowledge of the following, and if called as a witness, I could and would testify competently to this declaration's contents. 2. Attached hereto as Exhibit A are true and correct copies of excerpts from the depositions of Thomas C. Merigan, M.D., conducted on September 11 and 13, 2006. 3. Attached hereto as Exhibit B is a true and correct copy of excerpts from the deposition of Thomas J. White, Ph.D., conducted on October 9, 2006. 4. Attached hereto as Exhibit C is a true and correct copy of excerpts from the deposition of Stacey R. Sias, Ph.D., conducted on October 4, 2006. 5. Attached hereto as Exhibit D is a true and correct copy of excerpts from the deposition of John J. Sninsky, Ph.D., conducted on July 27, 2006. 6. Attached hereto as Exhibit E is a true and correct copy of excerpts from the deposition of Shirley Yee Kwok, conducted on August 10, 2006. 7. Attached hereto as Exhibit F is a true and correct copy of excerpts from the deposition of David H. Schwartz, conducted on October 16, 2006. 8. Attached hereto as Exhibit G is a true and correct copy of excerpts from the deposition of Eric Groves, conducted on August 11, 2006. 9. Attached hereto as Exhibit H is a true and correct copy of excerpts from the deposition of William Grant Gerber, M.D., conducted on August 15, 2006. 10. Attached hereto as Exhibit I is a true and correct copy of excerpts from the deposition of Michael S. Ostrach, conducted on August 21, 2006. 11. Attached hereto as Exhibit K is a true and correct copy of excerpts from the deposition of Clayton Casipit, conducted on July 21, 2006. 12. Attached hereto as Exhibit L is a true and correct copy of excerpts from the deposition of Jeffrey Price, Ph.D. conducted on September 29, 2006. 1. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 3 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O 13. Attached hereto as Exhibit M is a true and correct copy of excerpts from the deposition of Alice Wang, Ph.D. conducted on August 8, 2006. 14. Attached hereto as Exhibit N is a true and correct copy of excerpts from the deposition of Michael W. Konrad, Ph.D. conducted on July 28, 2006. 15. Attached hereto as Exhibit 1 is a true and correct copy of Holodniy, et al., Detection and Quantification of Human Immunodeficiency Virus RNA in Patient Serum by Use of the Polymerase Chain Reaction, JID; 163:862-66 (April 1991). 16. Attached hereto as Exhibit 5 is a true and correct copy of excerpts from Mark Holodniy's Lab Notebook, vol. 1. 17. Attached hereto as Exhibit 7 is a true and correct copy of excerpts from Mark Holodniy's Lab Notebook, vol. 3. THIS DOCUMENT IS FILED UNDER SEAL pursuant to Civil Local Rule 79-5(d) and the accompanying Administrative Request Re Filing Under Seal Motion for Summary Judgment and Confidential Exhibits in Declaration of Michelle S. Rhyu. 18. Attached hereto as Exhibit 12 is a true and correct copy of Wang, et al., Quantitation of mRNA by the polymerase chain reaction, Proc. Natl. Acad. Sci. 86:9717-21 (December 1989). 19. Attached hereto as Exhibit 13 is a true and correct copy of Holodniy, et al., Inhibition of Human Immunodeficiency Virus Gene Amplification by Heparin, JCM, Vol. 29, No. 4, p. 676-79; April 1991 20. Attached hereto as Exhibit 15 is a true and correct copy of U.S. Patent No. 5,968,730, entitled "Polymerase Chain Reaction Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of Acquired Immunodeficiency Syndrome" Issued on October 19, 1999. 21. Attached hereto as Exhibit 16 is a true and correct copy of U.S. Patent No. 6,503,705 B2, entitled "Polymerase Chain Reaction Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of Acquired Immunodeficiency Syndrome" Issued on January 7, 2003. 2. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 4 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O 22. Attached hereto as Exhibit 23 is a true and correct copy of Stanford University Copyright and Patent Agreement for Mark Holodniy, dated June 28, 1988. 23. Attached hereto as Exhibit 24 is a true and correct copy of Stanford University Administrative Guide, Revision Notice 2, dated November 15, 1980. 24. Attached hereto as Exhibit 25 is a true and correct copy of Stanford Research Policy Handbook, Chapter entitled "Policy on Inventions, Patents and Licensing." 25. Attached hereto as Exhibit 28 is a true and correct copy of a Letter from David Schwartz and Thomas C. Merigan to Dr. Eric Groves, dated November 7, 1988, with attachment. 26. Attached hereto as Exhibit 29 is a true and correct copy of the Materials Transfer Agreement between Cetus Corporation and Thomas C. Merigan and David Schwartz, dated December 19, 1988. 27. Attached hereto as Exhibit 30 is a true and correct copy of the Visitor's Confidentiality Agreement between Cetus Corporation and Mark Holodniy, M.D. 28. Attached hereto as Exhibit 31 is a true and correct copy of Publication Clearance Request for "Quantitation of HIV-1 RNA in Serum and Correlation with Disease Status Using the Polymerase Chain Reaction," Submitted by Eric Groves 29. Attached hereto as Exhibit 34 is a true and correct copy of the Invention Disclosure, dated January 9, 1990. 30. Attached hereto as Exhibit 35 is a true and correct copy of a Facsimile Cover Sheet, with attachment, from Mark Holodniy to Eric Groves, M.D. 31. Attached hereto as Exhibit 39 is a true and correct copy of a draft of Holodniy et al., A Method for the Quantitation of Infectious HIV-1 RNA in Patient Serum Using the Polymerase Chain Reaction. 32. Attached hereto as Exhibit 41 is a true and correct copy of Holodniy, et al., Quantitation of HIV-1 RNA in the Serum of ARC and AIDS Patients Using the Polymerase Chain Reaction abstract. 33. Attached hereto as Exhibit 46 is a true and correct copy of Holodniy, et al., Reduction in Plasma Human Immunodeficiency Virus Ribonucleic Acid After Dideoxynucleoside 3. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 5 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O Therapy as Determined by the Polymerase Chain Reaction, J. Clin. Invest. 88:1755-59 (Nov. 1991) 34. Attached hereto as Exhibit 87 is a true and correct copy of the Declaration of Thomas Merigan Jr., dated November 16, 1992. 35. Attached hereto as Exhibit 123 is a true and correct copy of Stanford University Copyright and Patent Agreement. 36. Attached hereto as Exhibit 351 is a true and correct copy of the Agreement between Cetus Corporation and Thomas Merigan, dated May 1, 1980. 37. Attached hereto as Exhibit 352 is a true and correct copy of the Agreement between Cetus Immune Corporation and Thomas C. Merigan, dated December 15, 1980. 38. Attached hereto as Exhibit 356 is a true and correct copy of the Consulting Agreement between Cetus Corporation and Thomas Merigan, dated April 13, 1984. 39. Attached hereto as Exhibit 369 is a true and correct copy of the Non-Exclusive Consulting Agreement between Cetus Corporation and Thomas C. Merigan, dated April 19, 1991. 40. Attached hereto as Exhibit 518 is a true and correct copy of the Acquisition by Hoffman-La Roche Inc. and F. Hoffman-La Roche Ltd. of Certain Assets from Cetus Corporation, dated December 11, 1991. 41. Attached hereto as Exhibit 525 is a true and correct copy of a Letter from Peter McGuire to Rick Kentz, dated May 28, 1991, enclosing a preliminary copy of Schedules to the Assets Purchase Agreement. 42. Attached hereto as Exhibit 536 is a true and correct copy of Kwok, et al., Identification of Human Immunodeficiency Virus Sequences by Using In Vitro Enzymatic Amplification and Oligomer Cleavage Detection, J. Vir. 61(5):1690-94. 43. Attached hereto as Exhibit 537 is a true and correct copy of Ou et al., DNA Amplification for Direct Detection of HIV-1 in DNA of Peripheral Blood Mononuclear Cells, Science 239:295-97 (January 15, 1988). 4. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 6 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O 44. Attached hereto as Exhibit 550 is a true and correct copy of the Affidavit of John J. Sninsky, Ph.D., dated November 11, 1991. 45. Attached hereto as Exhibit 554 is a true and correct copy of a Letter from Luis Mejia to Thomas MacMahon, re "PCR Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of AIDS," dated October 1, 1998. 46. Attached hereto as Exhibit 554A is a true and correct copy of a Letter from Luis Mejia to Thomas MacMahon, re "PCR Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of AIDS," dated October 1, 1998 [Stanford Bates labeled version]. 47. Attached hereto as Exhibit 555 is a true and correct copy of U.S. Patent No. 5,631,128, entitled "Polymerase Chain Reaction Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of Acquired Immunodeficiency Syndrome" Issued on May 20, 1997. 48. Attached hereto as Exhibit 556 is a true and correct copy of U.S. Patent No. 5,650,268, entitled "Polymerase Chain Reaction Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of Acquired Immunodeficiency Syndrome" Issued on July 22, 1997. 49. Attached hereto as Exhibit 601 is a true and correct copy of the Consulting Agreement between Cetus Corporation and Thomas Merigan, dated April 13, 1984. 50. Attached hereto as Exhibit 602 is a true and correct copy of the Non-Exclusive Consulting Agreement between Cetus Corporation and Thomas C. Merigan, dated April 19, 1991. 51. Attached hereto as Exhibit 640 is a true and correct copy of Kawasaki, Amplification of RNA, Chapter 3 of PCR Protocols: A Guide to Methods and Applications (1990). 52. Attached hereto as Exhibit 681 is a true and correct copy of Defendants' Supplemental Responses and Objections to Plaintiff's First and Second Sets of Interrogatories [Nos. 2-11], dated August 14, 2006. THIS DOCUMENT IS FILED UNDER SEAL pursuant to 5. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 7 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O Civil Local Rule 79-5(d) and the accompanying Administrative Request Re Filing Under Seal Motion for Summary Judgment and Confidential Exhibits in Declaration of Michelle S. Rhyu. 53. Attached hereto as Exhibit 684 is a true and correct copy of U.S. Patent No. 5,856,086, entitled "Polymerase Chain Reaction Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of Acquired Immunodeficiency Syndrome" Issued on January 5, 1999. 54. Attached hereto as Exhibit 686 is a true and correct copy of U.S. Patent No. 4,683,195, entitled "Process for Amplifying, Detecting, and/or Cloning Nucleic Acid Sequences" Issued on July 28, 1987. 55. Attached hereto as Exhibit 692 is a true and correct copy of excerpts from the File History of U.S. Patent No. 5,650,268. 56. Attached hereto as Exhibit 693 is a true and correct copy of Stanford University Office of Technology Licensing PowerPoint Presentation. 57. Attached hereto as Exhibit 694 is a true and correct copy of Kellogg and Kwok, Detection of Human Immunodeficiency Virus, Chapter 40 of PCR Protocols: A Guide to Methods and Applications (1990). 58. Attached hereto as Exhibit 695 is a true and correct copy of Kwok, et al., Effects of primer ­ template mismatches on the polymerase chain reaction: Human immunodeficiency virus type 1 model studies, Nucleic Acids Research 18(4):999-1005 (Feb. 25, 1990). 59. Attached hereto as Exhibit 696 is a true and correct copy of Levenson and Chang, Nonisotopically Labeled Probes and Primers, Chapter 13 of PCR Protocols: A Guide to Methods and Applications (1990). 60. Attached hereto as Exhibit 697 is a true and correct copy of Wang and Mark, Quatitative PCR, Chapter 9 of PCR Protocols: A Guide to Methods and Applications (1990). 61. Attached hereto as Exhibit 698 is a true and correct copy of an abstract of Holodniy, et al., Quantitation of HIV-1 RNA in Serum and Correlation with Disease Status Using the Polymerase Chain Reaction, J. Cellular Biochemistry, UCLA Symposia on Molecular Cellular Biology Abstracts (1990). 6. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP Case 3:05-cv-04158-MHP Document 95 Filed 10/27/2006 Page 8 of 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COOLEY GODWARD KRONISH LLP A T T O R N E Y S A T LAW PALO A L T O 62. Attached hereto as Exhibit 699 is a true and correct copy of an abstract of Holodniy, et al., Quantitation of HIV-1 RNA in the Serum of ARC and AIDS Patients Using the Polymerase Chain Reaction, Volume 2 Abstracts (June 22, 1990). 63. Attached hereto as Exhibit 700 is a true and correct copy of the Stipulation and Permitting Defendants to Amend Answer and Counterclaims Without Objection, dated June 29, 2006. 64. Attached hereto as Exhibit 701 is a true and correct copy of U.S. Reissued Patent No. RE38,352 E, entitled "Polymerase Chain Reaction Assays for Monitoring Antiviral Therapy and Making Therapeutic Decisions in the Treatment of Acquired Immunodeficiency Syndrome" Issued on December 16, 2003. 65. Attached hereto as Exhibit 702 is a true and correct copy of Roche's Privilege Log, served on October 3, 2006. I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct, and that this declaration was executed at Palo Alto, California on October 27, 2006. /s/ Michelle S. Rhyu 739770 v1/PA 7. RHYU DECL. I/S/O MOTION FOR SUMMARY JUDGMENT CASE NO. C 05 04158 MHP

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