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`LEWIS J. RUBIN,
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`Plaintiff,
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`v.
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`Case No. 43 l 672-V
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`Hon. Gary E. Bair
`Track 4 Judge
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`UNITED THERAPEUTICS CORPORATION, et (11.,
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`Defendants.
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`AFFIDAVIT OF LEWIS J. RUBIN
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`1.
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`I, Dr. Lewis J. Rubin, plaintiff in the above-identified action, am over eighteen years
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`of age and competent to testify.
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`I am fully familiar with and have personal knowledge of the facts
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`set forth in the Complaint and in this Affidavit.
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`2.
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`I respectfully submit this Affidavit in opposition to Defendants United Therapeutics
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`Corporation (“UTC) and Lung Biotechnology PBC’s Motion for Award of Costs and Expenses.
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`3.
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`Defendants assert that my assertion ofclaims in this action is “a brazen attempt to
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`extort UTC" for compensation for patent rights that I “knowingly assigned” to UTC. This assertion
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`is untrue and disregards claims that l assert in the Complaint for reformation of the assignments
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`based on mutual mistake to recognize that l have an undivided interest in the patents rights in
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`dispute.
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`4.
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`Defendants mischaracterize my association with UTC and Dr. Martine Rothblatt
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`(“‘Dr. Rothblatt”), the company’s founder and CEO.
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`I have more than a 20-year friendship and
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`business relationship with Dr. Rothblatt. Beginning in 1995, I worked with Dr. Rothblatt at PPH
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`Cure Foundation, a non-profit foundation to promote research in PAH. After the founding of UTC
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`in 1996, Dr. Rothblatt asked me to work with the company as a consultant. During my 20-year
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`tenure with UTC, I entered into a number of consulting agreements with UTC and played a central
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`role in developing UTC’s line drugs of drugs for treating pulmonary arterial hypertension (“PAH").
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`5.
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`By the early Fall of2003. 1 conceptualized the invention which is the subject of the
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`patent rights at issue in this case — the treatment of PAH by administration of treprostinil by a
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`metered dose inhaler or pulsed nebulizer. An aspect of the invention, which I believe is critical is
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`the delivery of the medication in a single event consisting of fewer than 18 breadths.
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`6.
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`Thereafter, in mid-September 2003. I met Dr. Rothblatt for lunch while she was in
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`the San Diego area visiting family. At that time, I was a Professor at the University ofCalifomia,
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`San Diego School of Medicine and resided in San Diego. At the luncheon, I disclosed my new
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`invention to Dr. Rothblatt. We agreed to enter into a consulting agreement to pursue clinical trials
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`relating to the invention.
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`7.
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`In late September. I signed a Services Agreement (“2003 Services Agreement") with
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`Lung Rx (now defendant Lung-Bio, a UTC subsidiary) which provided for the conduct ofclinical
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`trials with a view to obtaining FDA approval for my invention. (Compl., Ex. 4). This program was
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`designated the TRIUMPH program (Bepostinil Inhalation Qse for the Management of Pulmonary
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`Arterial Hypertension). It was my firm understanding that I had at least a co-ownership interest in
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`any patents resulting from the TRIUMPH program because I conceptualized the invention on my
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`own and not as a consultant for UTC. When I met with Dr. Rothblatt, I had fully conceptualized the
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`invention and it required only routine experimentation through clinical trials to permit FDA review.
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`8.
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`When I executed the 2003 Services Agreement it was my understanding that l was
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`required to assign to UTC patentable inventions that I conceived while working as a consultant for
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`UTC. However, as I stated above, it was my firm view that I conceptualized and brought the
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`invention to Dr. Rothblatt prior to entering into the 2003 Services Agreement.
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`9.
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`The Court determined that the Ownership provision in the 2003 Services Agreement
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`requires me to assign my invention to UTC because it was conceived "in whole or part" under the
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`2003 Services Agreement. Contrary to the Court’s decision, it was my understanding that I was
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`required to assign inventions or improvements in my invention that I conceived in my role as
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`consultant under the 2003 Services Agreement. In all events, my invention pre-dates the 2003
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`Services Agreement.
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`10.
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`Under the 2003 Services Agreement, I assisted UTC in organizing a team for
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`clinical trial work which led to FDA approval.
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`I also cooperated with UTC in the prosecution of
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`patent applications for my invention which issued as US. Patent No. 9,339,507 and US. Patent No.
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`9,358,240 ("the ‘507 and ‘240 patents”).
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`I now understand that l executed two assignment
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`documents — one for a provisional application, dated July 24, 2006, and a second for a formal patent
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`application, dated June 1 l, 2007.
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`I did not have these documents in my files. My current attorneys
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`located the assignments at the United States Patent and Trademark Office’s website and provided
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`me with copies of the assignments for review. Although I executed various formal documents for
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`the patent filings, I had no understanding that these documents included an assignment of my patent
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`rights.
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`1 I.
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`At my attorneys’ office, I reviewed the assignment dated June 1 1, 2007.
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`1
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`determined that I executed this document at UTC’s corporate offices in Silver Spring, Maryland.
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`On June 11, 2007, 1 attended an all-day conference at UTC’s corporate offices to review the status
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`of the TRIUMPH development program, and trial data for presentation to the FDA. In attendance at
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`the conference were Dr. Rothblatt, Eugene Sullivan, the Chief Medical Officer of Lung-Rx, and Ted
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`Staub, Lung Rx’s executive responsible for implementing the TRIUMPH development program.
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`(Compl. 1] 47).
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`12.
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`At the conclusion of the conference, as I was leaving for the airport, Dr. Rothblatt
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`asked me to sign documents relating to a formal patent application for my invention. Records of the
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`US. Patent and Trademark Office disclose that these documents included a Declaration of
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`Invention and the assignment of my patent rights.
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`1 executed these documents without review based
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`upon my understanding from discussion with Dr. Rothblatt that the documents were in good order.
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`I have a longstanding relationship of trust with Dr. Rothblatt and generally deferred to her with
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`regard to legal formalities. Dr. Rothblatt is an attorney.
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`I did not read these formal patent
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`documents and am confident that other participants present at the meeting will confirm my
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`recollection. (See Compl. 1H] 45 — 55).
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`13.
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`The assignment of the provisional patent application was executed at my office in
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`San Diego.
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`I executed this document at UTC’s request and have no records relating to it. In all
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`events, I always proceeded on the premise that I could trust Dr. Rothblatt and UTC to attend to
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`necessary legal formalities. (Compl. 1H] 43 — 44).
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`First Knowledge of Claims
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`14.
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`On February 1, 2016, UTC’s patent attorneys sent me an e—mail requesting that I
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`execute additional documents relating to patent filings for my invention.
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`I responded by e-mail
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`requesting an explanation of the documents and status of my patent applications. UTC‘s patent
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`counsel advised by e-mail that 1 had assigned to UTC all my rights in my invention. UTC‘s
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`counsel advised that the additional patent document was a Declaration of Invention for a further
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`4
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`patent application claiming priority to my earlier patent applications. (Compl., 1H] 56 — 58).
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`After learning from UTC that the Declaration was a formality, I signed and returned it to UTC’s
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`patent counsel.
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`15.
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`In early March of20 l 6, I retained Glenn F. Ostrager of the firm ofOstrager
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`Chong Flaherty & Broitman PC. to advise me in this matter. At that time, my primary interest
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`was to engage in a discussion with Dr. Rothblatt to address my concerns about the assignments.
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`Also, I had conceptualized a new invention relating to a PAH drug which I wanted to discuss
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`with Dr. Rothblatt. Mr. Ostrager recommended that 1 file a Provisional Application prior to my
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`meeting. On April 1, 2016, an attorney in Mr. Ostrager’s firm filed the Provisional Application.
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`16.
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`On April 5, 2016. I met with Dr. Rothblatt in New York for lunch to discuss this
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`matter.
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`I invited my colleague Werner Seeger to attend the meeting. Dr. Rothblatt advised that the
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`assignments relating to my invention were binding legal documents. Accordingly, she stated that it
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`would be difficult for UTC to provide compensation for my contributions beyond the payments that
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`I had received for my consultation work. Nevertheless, Dr. Rothblatt advised that she wished to
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`discuss a new consulting agreement.
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`17.
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`On May 31, 2016, I sent Dr. Rothblatt an e-mail to follow up our discussions at our
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`April luncheon.
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`I did not consult with Mr. Ostrager regarding this communication. In this e-mail, I
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`expressed the state of affairs that then existed based on the actual wording ofthe assignments and
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`based on what Dr. Rothblatt had told me at the April 5 meeting, and again requested that UTC agree
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`to a "signing bonus” for a new consulting agreement to account for my prior contributions to the
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`company. Contrary to Defendants‘ assertion in its motion, 1 did not acknowledge that I
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`"knowingly” assigned my rights to UTC in ‘507 and ‘240 patents, that the assignment documents,
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`as written, accurately reflected the parties‘ intent, or that I was waiving a claim to reform the
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`assignments to accurately reflect the parties’ intent.
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`I was simply trying to acknowledge that which
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`Dr. Rothblatt stated at our meeting, and the fact that, as worded in the assignments, I did not have
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`rights in the two patents. The purpose of the April 5 meeting was to resolve in an amicable fashion
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`my concerns about the assignments, and to preserve what had been a valued personal and
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`professional relationship.
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`I wrote the May 31 email for the same purpose.
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`It would not have been
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`consistent with my purpose to write an antagonistic email alleging that the assignments were
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`improperly procured from me. Further, I do not believe that I have taken any position in this
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`litigation that is inconsistent with whatI wrote in my May 3] e-mail to Dr. Rothblatt. As I
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`understand the Complaint, our claims are based on the premise that I assigned away my rights
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`pursuant to the assignment documents. That is why, as I understand it, my Complaint seeks
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`reformation of those assignments, that is, to restore my rights.
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`18.
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`On June 29, 2016, UTC advised that it was prepared to enter into a new consulting
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`agreement but would not provide a signing bonus or other compensation beyond my normal hourly
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`rates.
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`19.
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`On July 7, 2016, I met with Mr. Ostrager and authorized his firm to undertake a
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`further due diligence investigation to determine whether I could properly pursue legal remedies. As
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`set forth in my counsel’s accompanying affidavit, UTC through its counsel declined to engage in a
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`further dialogue about the assignment issues.
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`20.
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`I worked closely with Mr. Ostrager, and his colleagues in their due diligence
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`investigation.
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`21.
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`On April 3. 2017, my attorneys filed the Complaint in this action. The Complaint
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`seeks reformation of the assignments to reflect what I believed was the parties‘ intent and recognize
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`that, as a named co-inventor in the ‘504 and '240 patents, l have a pro rata undivided in the patents
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`with UTC.
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`I reviewed several iterations of the Complaint to ensure. to the best of my ability, that
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`the Complaint is factually accurate. My only purpose for filing the Complaint was to vindicate what
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`I believe to be are my rights in the ownership of the patents related to the invention I conceived
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`prior to my meeting with Dr. Rothblatt in September, 2003.
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`22.
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`Based upon advice of counsel, I am pursuing an appeal of this Court’s decision
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`dismissing the Complaint.
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`I SWEAR AND AFFIRM UNDER THE PENALTIES OF PERJURY THAT THE
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`CONTENTS OF THE FOREGOING PAPER ARE TRUE TO THE BEST OF MY
`KNOWLEDGE. INFORMATION AND BELIEF.
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`Dated: November 14, 2017 ML WIS J. RUBIN, MD.
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