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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
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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.
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6. I have spent an additional six hours preparing these Reply papers. Applying my
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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
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foregoing is true and correct, and that I executed this declaration on this date in San Jose,
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California.
23
Dated: September 23, 2020
rpvA )frty
24
MARK W. HOSTETTER
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FURTHER DECL OF MARK HOSTETTER RE MOTION TO COMPEL PRODUCTION OF DOCUMENTS
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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