arrow left
arrow right
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
  • KEITH ROIZMAN VS. MACREGEN, INC. ET AL OTHER NON EXEMPT COMPLAINTS (FOR BREACH OF CONTRACT/ DISCRIMINATION) document preview
						
                                

Preview

MARK W. HOSTETTER (CA Bar No. 223264) I LAW OFFICE OF MARK W. HOSTETTER 181 Devine Street 2 ELECTRONICALLY San Jose, CA 95110 F I L E D 3 :ete#:gn:I:649oj:iii.:3-f545 Superior Court of California, County of San Francisco 4 09/23/2020 #?TmHeyR%;zP#in#ff Clerk of the Court 5 BY: RONNIE OTERO Deputy Clerk 6 7 8 SUPERIOR COURT OF CALIFORNIA 9 COUNTY OF SAN FRANCISCO 10 UNLIMITED JURISDICTION 11 12 KEITH ROIZMAN, ase No. CGC-19-573153 13 Plaintiff, URTHER DECLARATION OF MARK W. OSTETTER IN SUPPORT OF 14 VS. LAINTIFF'S MOTION TO COMPEL ACREGEN, INC. TO PROVIDE 15 MACREGEN, INC., BEENARD MICHAEL URTHER RESPONSES AND SILBER, MATTHEW 8. HEMINGTON, SPONSIVE DOCUMENTS TO 16 ROBERT C. FIELD, LAWRENCE A. QUESTS FOR PRODUCTION 0F YAI`INUZZI, CHRISTINE A. CURCIO, OCUMHNTS SET TWO AND REQUEST 17 COOLEY LLP, and DOES ONE through TEN, OR MONETARY SANCTIONS inclusive, 18 ATE: September 30, 2020 Defendants IME: 9:00 a.in. 19 EPT: 302 DISCOVERY 20 I, Mark W. Hostetter, declare: 21 1. I am an attorney at law duly admitted to practice before all the courts of the 22 State of California and the attorney of record herein for Plaintiff Keith Roizman in the above- 23 described action. The facts set forth below are within my personal knowledge and I am 24 competent to testify to their truth if called as a witness. I make this Further Declaration in 25 support of Plaintiffs motion for an order compelling MacRegen, Inc. to provide further 26 responses and responsive documents to his Request for Production of Documents Set Two, and 27 for Monetary Sanctions. 28 2. Document production in this case has been voluminous, but usually non- FURTHER DECL OF MARK HOSTETTER RE MOTION TO COMPEL PRODUCTION OF DOCUMENTS -I 1 substantive. For example, each document is repeated numerous times, presumably representing 2 identical messages residing in each party's email account, as well as each and every generation 3 of long email chains. Such redundancy accounts for approximately 90% of the documents I have 4 reviewed. 5 3. On september 1 5, 2020, MacRegen served its amended response to form 6 interrogatory 15.1, in which it Defendants repeatedly accuse Plaintiff of "misrepresenting his 7 role at MacRegen and degree of board authorization to third parties." Attached hereto as 8 Exhibit I is a true and correct copy of a relevant portion of that response. 9 4. Due to my client's blinding disability, I have researched for him online records of 10 public filings relating to his inventions, such as at the U.S. Patent and Trademark Office 11 (USPTO). Attached hereto as Exhibit 2 is a true and correct copy of records I downloaded from 12 the USPTO website showing that between January 25, 2017 and August 14, 2017, MacRegen 13 eliminated Defendant Christine A. Curcio as a named inventor on one of Plaintiff s early patents. 14 5. Attached hereto as Exhibit 3 is a true and correct copy of records I downloaded 15 from the USPTO website showing that in July 2020, patent application number 15/113954 was 16 deemed abandoned by the U.S. Patent and Trademark Office due to invalid filings lacking 17 inventor declarations. 18 6. I have spent an additional six hours preparing these Reply papers. Applying my 19 reasonable hourly rate of $350, the total amount of attomeys' fees and costs incuITed in 20 preparing these Reply papers is $2,100, bringing the total request to $5,720. I declare under penalty of perjury under the laws of the state of California that the 21 foregoing is true and correct, and that I executed this declaration on this date in San Jose, 22 California. 23 Dated: September 23, 2020 rpvA )frty 24 MARK W. HOSTETTER 25 26 27 28 FURTHER DECL OF MARK HOSTETTER RE MOTION TO COMPEL PRODUCTION OF DOCUMENTS -2 Exhibit 1 1 1. First Affirmative Defense: Failure to State a Cause of Action 2 a. This defense relates to the four comers of the complaint and does not rely on :, factual support. 4 b. N/A 5 c. N/A 6 2. Second Affirmative Defense: Material Breach 7 a. Plaintiff breached his Common Stock Purchase Agreement and the alleged 8 October 2017 written agreement by failing to cooperate in the assignment of 9 his intellectual property to MacRegen, specifically by refusing to com 10 an assigrment form and a declaration with regard to various United States 11 and international patents. Plaintiff further breached the alleged 2017 written 12 agreement by refusing to cooperate in the negotiation of an executive 13 employment agreement and by refusing to complete an assignment form and 14 a declaration with regard to various United States and international patents. 15 Discovery is ongoing and Defendants reserve the right to amend their 16 response. 17 b. Keith Roizman; Michael Silber; Robert Field; Matthew Hemington; Jake 18 Requard. 19 c. Correspondence between parties, including the documents listed on Exhibit A; Plaintiffs Common Stock Purchase Agreement; the October 12, 2017 written agreement; board minutes and other materials; correspondence with third parties. 3. Third Affirmative Defense: Breach of Implied Covenant a. Plaintiff breached the implied covenant of good faith and fair dealing in all the alleged contracts by failing to cooperate in the assignment of his intellectual property, failing to negotiate in good faith an executive employment agreement, misrepresenting his role at MacRegen and degree of board authorization to third parties, acting with hostility toward his MACREGEN, INC.'S AMENDED RESPONSE TO FORM INTERROGATORIES, SET TWO E-1. I 1 2 acting contrary to the interests of the company. Discovery is ongoing and 3 Defendants reserve the right to amend their response. 4 Keith Roizman; Michael Silber; Robert Field; Christine Curcio; Lawrence 5 A. Yannuzzi; Matthew Hemington; Jake Requard. Icolleagues, attempting to turn colleagues against each other, and otherwise 6 c. Correspondence between parties, including the documents listed on Exhibit 7 A; Plaintiff s Common Stock Purchase Agreement; the October 12, 2017 8 written agreement; board minutes; correspondence with third parties. 9 4. Fourth Affirmative Defense: Estoppel 10 a. Plaintiff is estopped from asserting claims because he participated in and 11 ratified all or nearly all decisions about which he complains and because he 12 acknowledged that his stock certificates would be printed at a later date. 13 Discovery is ongoing and Defendants reserve the right to amend their 14 response. 15 b. Keith Roizman; Michael Silber; Robert Field; Christine Curcio; Lawrence 16 A. Yannuzzi; Matthew Hemington; Jake Requard. 17 c. Correspondence between parties, including the documents listed on Exhibit 18 A; written agreements; board minutes and other materials; correspondence 19 with third parties. 20 5. Fifth Affirmative Defense: Waiver/Acquiescence a. Plaintiff waived his entitlement to paper share certificates explicitly on at least one occasion and implicitly for years by declining to demand paper certificates. Plaintiff waived his entitlement to shares by failing to cooperate in the assignment of his intellectual property (though he was nevertheless issued them). Plaintiff acquiesced in MacRegen's conduct because he was at all relevant times a director, officer, and shareholder of MacRegen and was aware of its business activities. Plaintiff agreed to not take any salary from MacRegen until the company was appropriately funded. Discovery is -47- MACREGEN, INC.'S AMENDED RESPONSE TO FORM INTERROGATORIES, SET TWO Exhibit 2 u5H0 UNITED STATES PATENT AND TRADEMARK OFFICE Assignment abstract of title for Application 15414422 Invention title/Inventor Patent Publication Application PCT International registration TREATMENT OF AGE-RELATED None 20180207233 15414422 MACULAR DEGENERATloN AND Jul 26, 2018 Jan 24, 2017 OTHER EYE DISEASES WITH APOLIPOPROTEIN MIMETICS Martin RUDOLF, Keith ROIZMAN Assignments (3 of 3 total) Assignment 3 Reel/frame Execution date Date recorded Properties Pages 048079/0250 Julo9,2018 Jan l6,2019 1 3 Conveyance ASSIGNMENT 0F ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS). Assignors Correspondent ROIZMAN, KEITH C. BRANDON BROWNING RUDOLF, MARTIN 1901 SIXTH AVENUE NORTH SulTE 2400 BIRMINGHAM, AL 35203 Assignee MACREGEN, INC. 4200 THE WOODS DRIVE SUITE 101 SAN JOSE, CALIFORNIA 95136 Assignment 2 Reel/frame ate Date recorded Properties Pages 045607/0397 Aug 14, 2017 Mar 15, 2018 I 3 Conveyance ASSIGNMENT OF ASSIGNORS INTEREST (SEE DOCUMENT FOF} DETAILS). Correspondent ROBERT K. CERPA MORRISON & FOERSTER LLP 755 PAGE MILL ROAD PALO ALTO, CA 94304-1018 Assignee MACREGEN, lNC. 4200 THE WOODS DRIVE SUITE 101 SAN JOSE, CALIFORNIA 95136 Assignment 1 Reel/frame te Date recorded Properties Pages 041097/0635 Jan 25, 2017 Jan 26, 2017 1 10 Conveyance ASSIGNMENT 0F ASSIGNORS INTEREST (SEE DOCUMENT FOR DETAILS). Fh2- RUDOLF, MARTIN ROBERT K. CERPA KEITH MORRISON & FOERSTER LLP CuRCIO' HRISTINE A. 755 PAGE MILL ROAD SILBER, a. lcHAEL PALO ALTO, CA 94304-1018 Assignee MACREGEN, lNC. 4200 THE WOODS DRIVE, SUITE 101 SAN JOSE, CALIFORNIA 95136 Exhibit 3 Continuation Shcot (PTOL-413B) Application No.15/113,054 Continuation of Substance of Interview including description of the general nature of what was agreed to if an agreement was reached, or any other comments: This application has been identified by OPESS as one where an RCE was filed without an inventor oath or declaration in an application filed under 35 USC 371. This means that the filing under 37 CFR 1.114 did not stop the time to respond, and OPESS will be sending out a notice of abandonment. To keep applicants in the loop and to help them decide how to deal with the issue, Tarn Dinh, applicant's representative was contacted. Attached is a memo explaining the issue (file ''memo") and the e-mail from Larry Riggs (SPE, Au 1658) (file " email") identifying this application as affected by the issue. As this is not a matter normally decided by the examiner, he doesn't know any details beyond the attached documents. E*k`L,I 3 holds, Fred From: Riggs, Lany D. Sent: Friday, July 10, 202012:13 PM To: Reynolds, Fred Subject: URGENT -READ IMMEDIATELY Attachments: Improper RCE in 371 Applications-Background.docx Hi Fred, For applications filled under 35 USC 371, an oath or declaration for each named inventor must be filed before a RCE can be properly filed. A number Of RCEs were improperly processed due to the lack of an oath or declaration. For a more detailed desoription, see the attached WORD document. You have been identified as an examiner with one or more of these improperly processed RCEs in which the statutory period for respense in the action prior to the filing of the RCE has expired. As such, the application is abandoned and a notice of abandonment will be mailed. It is anticipated that these applications will be revived. The serial number Of this/these application(s) is/are: 15/113,954. You should refrain from anv further action on these aDDlications. If any of these applications are on your regular new docket and have a clock, new case oredit will not be required in order to receive oredit for asterisk RCEs. If the application is selected as an asterisk, the next oldest RCE on your docket will be eligible for asterisk oredit. Please contact me for these adjustments. If any of these applications have a clock, they will not generate a docket management score or result in a penalty if they exceed the ceiling. In order to mitigate the impact from loss of a dispesal oredit due to a revival at a later date (e.g. next fiscal year), these cases will be abandoned and revived without the normal count oredit transaction. In other words, you will not receive disposal oredit for the abandonment nor will it be taken away from you when the application is revived. Once the application is revived, the application will be returned to its ourrent status and you will be eligible to receive the ourrent remaining count credit. Example: An application with improper RCE is in status 041 (Non Final Action Mailed). The examiner has already received 1 count for the FAOM. As the case is abandoned and subsequently revived, the examiner will receive no additional count credit activity for these actions. However, once revived, the application will be returned to status 041 or status 071 (if a respense is filed), and the remaining .75 count oredit will be available to the examiner when prosecution is resumed. TThese applications will be monitored and in the event that a petition to revive is not filed by 9/1/21, a disposal for the abandonment will be oredited to the examiner. Let me know if you have questions. Larry Riggs Supervisory Patent Examiner Art Unit 1658 571.270.3062