Horst OLSCHEWSKI et a1.
`
`IN THE UNITED STATES PATENTAND TRADE/MARK OFFICE
`
`Atty. Dkt. No. 080618-0548
`, Appl. No. 11/748,205
`
`Title:
`
`TREPROSTINIL
`ADMINISTRATION USING A
`
`METERED DOSE INHALER
`
`Appl. No.:
`
`11/748,205
`
`Filing Date:
`
`5/14/2007
`
`Examiner:
`
`Unassigned
`
`Art Unit:
`
`1616
`
`Confirmation
`Number:
`
`6003
`
`DECLARATION OF RACHEL TUROW IN SUPPORT OF PETITION UNDER 37
`
`C.F.R. § 1.47121)
`
`Mail Stop Petition
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`1, Rachel Turow, hereby declare the following:
`
`1.
`
`I am employed by United Therapeutics Corporation as Associate Counsel &
`
`Director of Legal Affairs. As part of my job responsibilities, I was asked to collect signatures
`
`from inventors for a declaration under 37 C.F.R. § 1.63 for US patent application no.
`
`1 1/748,205. My employer, United Therapeutics Corporation, is the assignee of US patent
`
`application no. 1 1/748,205.
`
`I have not received any compensation, other than my regular
`
`salary, for submitting this declaration.
`
`2.
`
`US patent application no. 1 1/748,205 lists the following seven persons as
`
`inventors: (1) Horst Olschewski; (2) Robert Roscigno; (3) Lewis J. Rubin; (4) Thomas
`
`Schmehl; (5) Werner Seeger; (6) Carl Steritt and (7) Robert Voswinckel. Inventor (2)
`
`Roscigno; Inventor (3) Rubin and Inventor (6) Steritt each executed a declaration for the
`
`WASH_2136825.1
`
`-1-
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 1 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 1 of 28
`
`

`

`Atty. Dkt. No. 080618-0548
`Appl. No. 11/748,205
`
`present application. However, Inventor (1) Olschewski, Inventor (4) Schmehl, Inventor (5)
`
`Seeger and Inventor (7) Voswinckel never executed the declaration for the present
`
`application.
`
`3.
`
`It is my belief that each of Inventor (1) Olschewski, Inventor (4) Schmehl,
`
`Inventor (5) Seeger and Inventor (7) Voswinckel exhibited conduct indicating that they have
`
`refused to execute a declaration for the present application. My reasons are explained more
`
`fully below.
`
`4.
`
`The present application lists the same seven inventors: (1) Olschewski, (2)
`
`Roscigno, (3) Rubin, (4) Schmehl, (5) Seeger, (6) Steritt and (7) Voswinckel, as US
`
`provisional application no. 60/800,016, to which the present application claims priority.
`
`Previously, Mr. Andrew Fisher, Senior Vice President and Deputy General Counsel of both
`United Therapeutics Corporation and Iung Rx, Inc., which is a separately managed affiliate
`
`of United Therapeutics Corporation, collected signatures from each of the seven inventors for
`
`an assignment in US provisional application no. 60/800,016. In the present application, I
`
`used the same approach for contacting the inventors that Mr. Andrew Fisher used in US
`
`provisional application no. 60/800,016.
`
`5.
`
`Using the approach that Mr. Andrew Fisher employed in US provisional
`
`application no. 60/800,016, I contacted directly Inventor (2) Roscigno, Inventor (3) Rubin and
`
`Inventor (6) Steritt forwarding each of them a declaration for the present application. Each of
`
`Inventor (2) Roscigno, Inventor (3) Rubin and Inventor (6) Steritt timely executed the
`
`declaration and forwarded it back to me. The declaration for the present application executed
`
`by each of Inventor (2) Roscigno, Inventor (3) Rubin and Inventor (6) is filed with the
`
`petition under 37 CPR. § l.47(a).
`
`6.
`
`Each of Inventor (2) Roscigno, Inventor (3) Rubin and Inventor (6) Steritt
`
`executed the declaration on his behalf and on behalf of Inventor (l) Olschewski, Inventor (4)
`
`Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel, as indicated by signature blocks
`
`for each of the non-signing inventors.
`
`Indeed, at no time did any of Inventor (2) Roscigno,
`
`WASH_2136825.1
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 2 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 2 of 28
`
`

`

`Atty. Dkt. No. 080618-0548
`Appl. No. 11/748,205
`
`Inventor (3) Rubin and Inventor (6) Steritt claim that any of Inventor (1) Olschewski,
`
`Inventor (4) Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel were not inventors.
`
`7.
`
`The approach that Mr. Andrew Fisher used for contacting Inventor (1)
`
`Olschewski, Inventor (4) Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel,
`
`collectively known as the “Giessen team” or “Giessen”, in US provisional application no.
`
`60/800,016 was as follows: Mr. Andrew Fisher sent documents to be executed to Inventor (5)
`
`Seeger, who in turn coordinated the execution of the documents by Inventor (1) Olschewski,
`
`Inventor (4) Schmehl and Inventor (7) Voswinckel. In the present application, I used the
`
`same approach. Accordingly, on June 15, 2007, I sent an email to Inventor (5) Seeger with an
`
`attached declaration as an MS Word file. In this email, I asked Inventor (5) Seeger a) to
`
`execute the declaration himself and b) to forward the declaration to other three members of
`
`the Giessen team, i.e. Inventor (l) Olschewski, Inventor (4) Schmehl and Inventor (7)
`
`Voswinckel. My June 15‘h email clearly stated that the declaration is for a Metered Dose
`
`Inhaler Patent Application. Within approximately a week, Ms. Rosmarie Hebelstadt, a
`
`personal assistant to Inventor (5) Seeger, copied me on an email forwarding the declaration to
`
`each of Inventor (1) Olschewski, Inventor (4) Schmehl and Inventor (7) Voswinckel. Ms.
`
`Rosmarie Hebelstadt’s email clearly stated that the declaration is for the Metered Dose
`
`Inhaler Patent Application. Both my June 15th email to Inventor (5) Seeger and Ms.
`
`Hebelstadt’s email forwarding the declaration to Inventor (1) Olschewski, Inventor (4)
`
`Schmehl and Inventor (7) Voswinckel were automatically erased by my email system without
`
`my knowledge. Accordingly, these emails are not submitted with my declaration.
`
`8.
`
`On August 22, 2007, I reminded Inventor (5) Seeger via email of my request to
`
`obtain signatures on the declaration from himself and from Inventor (l) Olschewski, Inventor
`
`(4) Schmehl and Inventor (7) Voswinckel. My reminder clearly stated that the declaration is
`for the Metered Dose Inhaler Patent Application. 1A redacted copy of this reminder is
`
`attached as Exhibit 1.
`
`9.
`
`After receiving no response, I asked Mr. Paul Mahon, Executive Vice
`
`President and General Counsel of both United Therapeutics Corporation and Lung Rx, Inc.,
`
`to contact Inventor (5) Seeger. Following my request, on September 4, 2007, Mr. Paul
`
`WASH_2136825.1
`
`-3-
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 3 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 3 of 28
`
`

`

`Atty. Dkt. No. 080618-0548
`Appl. No. 1 1/748,205
`
`Mahon sent an email to Inventor (5) Seeger following up on my August 22nd reminder again
`
`with an attached declaration as an MS Word file. A redacted copy of this email, on which I
`
`was copied, is attached as Exhibit 2. On September 5, 2007, Inventor (5) Seeger responded to
`
`Mr. Paul Mahon’s September 4th email confirming that he had received the emails and
`
`attachments concerning the declaration and indicating that he had issues that he wanted to
`
`discuss in a telephone conversation. A redacted copy of this email is attached as Exhibit 3.
`
`On the same day, September 5, 2007, Mr. Paul Mahon responded to Inventor (5) Seeger with
`
`a reference to Mr. Andrew Fisher or me as appropriate contact persons. A redacted copy of
`
`this email is attached as Exhibit 4.
`
`10.
`
`After an email exchange on September 21, 2007, and September 26, 2007,
`
`between Mr. Paul Mahon, Inventor (5) Seeger and Ms. Rosmarie Hebelstadt, a telephone
`
`conference was arranged between Mr. Andrew Fisher and Inventor (5) Seeger for September
`
`26, 2007. The subject line in the email exchange clearly states that it relates to the Metered
`
`Dose Inhaler Patent Application. A redacted copy of this email exchange is attached as
`
`Exhibit 5. The telephone conference between Mr. Andrew Fisher and Inventor (5) Seeger
`
`took place as scheduled in the email exchange. During the telephone conference, Inventor (5)
`
`Seeger raised an issue of additional compensation for the subject matter claimed in the
`
`present application.
`
`I listened silently to the telephone conference with Mr. Andrew Fisher
`
`via another phone connected to the line on which Mr. Andrew Fisher was speaking.
`
`11.
`
`On October 1, 2007, Mr. Paul Mahon, on behalf of United Therapeutics
`
`Corporation and Lung Rx, Inc., responded via email to the concerns expressed by Inventor (S)
`
`Seeger. In particular, Mr. Paul Mahon pointed out that all the inventors, including Inventor
`
`(1) Olschewski, Inventor (4) Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel, had
`
`executed an assignment to United Therapeutics Corporation previously, referring to an
`
`assignment executed in US provisional application no. 60/800,016, to which the present
`
`application claims priority. Mr. Mahon also pointed out that under clinical study agreements
`
`between Lung Rx, Inc., and Giessen, the results of the clinical studies would be owned by
`
`Lung Rx, Inc. A redacted copy of Mr. Mahon’s October 1SI email is attached as Exhibit 6.
`
`The assignment made in US provisional application no. 60/800,016 to United Therapeutics
`
`WASH_2136825.1
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 4 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 4 of 28
`
`

`

`Atty. Dkt. No. 080618-0548
`Appl. No. 11/748,205
`
`Corporation executed by each of Inventor (l) Olschewski, Inventor (4) Schmehl, Inventor (5)
`
`Seeger and Inventor (7) Voswinckel is attached as Exhibit 7.
`
`12.
`
`On October 11, 2007, Inventor (5) Seeger responded to Mr. Paul Mahon in an
`
`email to Dr. Martine Rothblatt, Chief Executive Officer of both United Therapeutics
`
`Corporation and Lung Rx, Inc. In this email, Inventor (5) Seeger expresses the collective
`
`views of the Giessen team, which includes Inventor (5) Seeger himself as well as Inventor (1)
`
`Olschewski, Inventor (4) Schmehl, and Inventor (7) Voswinckel. Inventor (5) Seeger
`
`discusses the contribution of the Giessen team to the subject matter of the present application.
`
`Additionally, Inventor (5) Seeger expresses a collective belief of the Giessen team that
`
`compensation received under the clinical study agreements between Lung Rx, Inc., and
`
`Giessen covered only costs of the clinical studies and, thus, the Giessen team should be
`
`entitled to additional compensation for the subject matter claimed in the present application.
`
`In his October 11th email, Inventor (5) Seeger further mentioned that the Giessen-team sought
`
`legal advice on this matter from TransMIT GmbH and that, according to Tra'nsMIT GmbH,
`
`the Giessen team lacked any legal basis for claiming the additional compensation for the
`
`subject matter of the present application. Concluding his October 1
`
`1‘h email, Inventor (5)
`
`Seeger stated that the Giessen team was willing to withdraw from the patent application,
`
`should they receive no additional compensation for the subject matter of the present
`
`application. A redacted copy of the October 1
`
`1th
`
`email from Inventor (5) Seeger to Dr.
`
`Rothblatt, as forwarded by Mr. Paul Mahon to me, is attached as Exhibit 8.
`
`13.
`
`On October 1 1, 2007, Mr. Paul Mahon sent an email to Inventor (5) Seeger
`
`asking him again to sign and return the declaration previously sent to him. The subject line of
`
`this email clearly states that it relates to a Metered Dose Inhaler Patent Application (MDI
`
`patent). A redacted copy of this email, on which I was copied, is attaChed as Exhibit 9. In
`
`response, on October 12, 2007, Inventor (5) Seeger sent an email asking Mr. Paul Mahon to
`
`remove the names of the Giessen team members, i.e. the names of Inventor (l) Olschewski,
`
`Inventor (4) Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel, from the patent
`
`application. A redacted copy of this email, on which I was copied, is attached as Exhibit 10.
`
`On the same day, October 12, 2007, Mr. Paul Mahon sent an email to Inventor (5) Seeger, in
`
`which he explained that the names of the inventors could not be removed from the patent
`
`WASH_2136825.1
`
`-5-
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 5 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 5 of 28
`
`

`

`Atty. Dkt. No. 080618—0548
`Appl. No. 11/748,205
`
`application. In the same email, Mr. Mahon summarized his understanding of the Giessen
`
`team’s position as not wanting to participate in further developments of the present
`
`application. A redacted copy of this email, on which I was copied, is attached as Exhibit 11.
`
`14.
`
`It is my belief that a demand to withdraw the names of Inventor (1)
`
`Olschewski, Inventor (4) Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel from the
`
`present application expressed the October 1 1th and October 12m emails of Inventor (5) Seeger
`
`to Mr. Paul Mahon does not indicate that any of Inventor (1) Olschewski, Inventor (4)
`
`Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel denies being an inventor of the
`
`claimed subject matter of the present application.
`
`15.
`Instead, it is my belief that a demand to withdraw the names of Inventor (1)
`Olschewski, Inventor (4) Schmehl, Inventor (5) Seeger and Inventor (7) Voswinckel from the
`
`, present application expressed the October 1 1th and October 12‘h emails of Inventor (5) Seeger
`
`to Mr. Paul Mahon demonstrates a refusal to cooperate with United Therapeutics
`
`Corporation, including a refusal to sign the declaration.
`
`16.
`
`It is my belief that Inventor (1) Olschewski, Inventor (4) Schmehl, Inventor (5)
`
`Seeger and Inventor (7) Voswinckel refused to sign the declaration because they wanted
`
`additional compensation for the subject matter of the present application. Indeed, their
`
`request for further compensation was made despite their clear and unequivocal assignment
`
`made in US provisional application no. 60/800,016, which imposes on them a contractual
`
`duty to cooperate with the assignee, United Therapeutics Corporation, but entitles them to no
`
`further compensation.
`
`17.
`
`None of Inventor (1) Olschewski, Inventor (4) Schmehl, Inventor (5) Seeger
`
`and Inventor (7) Voswinckel denied being an inventor of the subject matter of the present
`
`application. Nor has any of Inventor (1) Olschewski, Inventor (4) Schmehl, Inventor (5)
`
`Seeger and Inventor (7) Voswinckel indicated that some other entity besides Inventor (1)
`
`Olschewski; Inventor (2) Roscigno, Inventor (3) Rubin, Inventor (4) Schmehl, Inventor (5)
`
`Seeger; Inventor (6) Steritt and Inventor (7) Voswinckel invented the subject matter of the
`
`present application.
`
`WASH__2136825.1
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 6 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 6 of 28
`
`

`

`Atty. Dkt. No. 080618-0548
`Appl. No. 11/743,205
`
`I hereby declare that none of the redacted portions of Exhibits 1-6 and 8-11
`19.
`contains any information contradicting my statements made in the present declaration.
`
`20.
`
`l executed two original copes of this declaration.
`
`I hereby declare that all statements made herein of my own knowledge are true
`21.
`and that all statements made on information and belief are believed to be true; and further that
`these statements were made with the knowledge that willful false statements and the like so
`made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the
`United States Code and that such willful false statements may jeopardize the validity of the
`
`application or any patent issued thereon.
`
`DEL
`
`
`CH 21.. TUROW
`
`WASH_2136825.1
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 7 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 7 of 28
`
`

`

`'
`
`'
`
`,
`
`EXHIBIT 2
`
`Fri, Oct 26. 2007 12:59 PM
`
`W S
`
`ubject: FW: Assignment and Declaration for Metered Dose Inhaler
`Application
`Date: Tuesday, September 4, 2007 11:23 AM
`From: Paul Mahon<-
`12» "seeger, Wm"<—
`Cc: Rachel Turow<_>
`Conversation: Assignment and Declaration for Metered Dose Inhaler
`Application
`
`Dear Werner,
`
`Happy September to you.
`
`I am following up on the email below concerning signed originals of the
`assignment and declaration for the metered dose inhaler application. Do
`you
`have everything you need?
`
`Best,
`
`Paul
`
`EXHIBIT 1
`
`------ Forwarded Message
`From: Rachel Turow<-
`Date: Wed, 22 Aug 2007 10:58:28 -0400
`To: mammar—
`Conversation: Assignment and Declaration for Metered Dose Inhaler
`Application
`Subject: Assignment and Declaration for Metered Dose Inhaler Application
`
`Page 1 of 3
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 8 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 8 of 28
`
`

`

`Dr. Seeger,
`
`I still have not heard back from your group on the assignment and
`declaration for the metered dose inhaler application.
`
`I need to get signed, notarized copies of the attached documents from the
`following people:
`
`Horst Olschewski
`
`Thomas Schmehl
`
`Yourself, Werner Seeger
`Robert Voswinckel
`
`Please let me know if I can be of any assistance to you in obtaining the
`signatures.
`
`Thank you for your prompt attention to resolving this matter.
`
`Rachel
`
`Rachel Turow
`
`Associate Counsel & Director of Legal Affairs
`United Therapeutics
`
`
`
`Page 2 of 3
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 9 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 9 of 28
`
`

`

`.
`
`Fri, Oct 26. 2007 12:59 PM
`
`EXHIBIT 4
`
`. Subject: Re: AW: Assignment and Declaration for Metered Dose
`InhalerApplication
`Date: Wednesday, September 5, 2007 6:02 AM
`From: Paul Mahon
`To: "Seeger, Werner"
`Cc: Andrew Fisher<- , Rachel Turow
`
`Conversation: AW: Assignment and Declaration for Metered Dose
`InhalerApplication
`
`Hello, Werner. I'm glad you've had a chance to go through the documents.
`When you're ready to talk, let me know and we can set up a time with some
`one who knows more about the details on this than I do, probably Andy
`
`Fisher
`
`or Rachel Turow.
`
`Best,
`
`Paul
`
`EXHIBIT 3
`
`On 9/5/07 6:02 AM, "Seeger, Werner"
`_ we
`
`> Paul,
`
`> >
`
`I found the emails when returning from holidays. I have, indeed, some
`> questions left. Is it ok that I will phone you when I went through the
`> material in detail?
`
`Best,
`
`> >
`
`Page 1 of 4
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 10 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 10 of 28
`
`

`

`Werner
`
`> >
`
`> > >
`
`Werner Seeger MD
`> Professor of Medicine
`
`> Chief of the Department of Internal Medicine
`> Section Head of Respiratory and Critical Care Medicine
`> Chairman of the University of Giessen Lung Center (UGLC)
`
`>
`
`..
`
`.
`
`> PHONE:—
`> TELEFAX:*
`>
`
`
`
`A
`
`...-'
`
`m!
`
`> >
`
`>—
`
`> >
`
`————— Urspriingliche Nachricht-----
`> Von: Paul Mahon
`
`> Gesendet: Dienstag, 4. September 2007 17:24
`> An: Seeger, \Verner
`> Cc: Rachel 'l'urow
`
`> Betreff: FVV; Assignment and Declaration for lVIetered Dose
`InhalerApplication
`
`Dear Werner,
`
`Happy September to you.
`
`> >
`
`> >
`
`Page 2 of 4
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 11 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 11 of 28
`
`

`

`EXHIBIT 5
`
`Frl, Oct 25. 2007 1:00 PM
`
`Subject: FW: AW: AW: Assignment and Declaration for Metered
`DoseInhalerApplication
`Date: Wednesday, September 26, 2007 6:24 AM
`From: Paul Mahon .
`
`To: "Seeger, Werner"
`Cc: Andrew Fisher-, Rachel Turow
`
`.C
`
`onversation: AW AW: Assignment and Declaration for Metered
`DoseInhalerApplication
`
`Dear Werner,
`
`When and where may we call you during your afternoon today?
`
`We're running out of time since the Assignment and Declaration forms for
`the
`
`MDI application which are due to the Patent and Trademark Office on
`September 30th. It would not be good to miss this deadline!
`
`Best,
`
`Paul
`
`> ------ Forwarded blessage
`> From: "Seeger. Werner"_>
`> Date: Fri, 21 Sep 2007 19:38:37 +0200
`> T0: Paul Mahon.
`> Subject: AW: AW: Assignment and Declaration for iVIetered
`> DoselnhalerApplication
`
`Paul,
`
`> >
`
`Page 1 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 12 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 12 of 28
`
`

`

`> >
`
`> >
`
`Can we try to phone next week, Monday or Thursday? What is the best
`phone
`> number to get into contact with you?
`
`Best,
`
`Werner
`
`> >
`
`> >
`
`Werner Seeger MD
`> Professor of Medicine
`
`> Chief of the Department of Internal lVIedicine
`> Section Head of Respiratory and Critical Care Medicine
`> Chairman of the University of Giessen Lung Center (UGLC)
`
`>
`
`~ nmm>mw.mu..._._-_..
`
`
`
`> ----- Urspriingliche Nachricht—————
`> v- Paul Mahon—
`> Gesendet: IVIittwoch, 5. September 2007 12:02
`> An: Seeger, Werner
`> CC: Andrew Fisher; Rachel "Furow
`
`Page 2 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 13 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 13 of 28
`
`

`

`Frl, Oct 26, 2007 1:17 PM
`
`
`Subject: FW: AW: AW: AW: Assignment and Declaration for
`MeteredDoseInhalerApplication
`Date: Wednesday, September 26, 2007 8:31 AM
`From: Paul Mahonw
`To: Andrew Fisher<_, Rachel Turow
`
`Conversation: AW AW: AW: Assignment and Declaration for
`MeteredDoseInhalerApplication
`
`So you've got a call with Werner at 7:00 pm his time on his numbers
`below....
`
`------ Forwarded Message
`From: Paul Mahon—
`Date: Wed, 26 Sep 2007 08:31:23 —0400
`To: "Hebestadt, Rosmarie"m
`
`Conversation: AW: AW: AW: Assignment and Declaration for
`MeteredDoseInhalerApplication
`Subject: Re: AW: AW: AW: Assignment and Declaration for
`MeteredDoseInhalerApplication
`
`Thank you, Rosemarie, for helping to schedule this. We will call Werner's
`numbers at 7:00 pm your time today.
`
`Best,
`
`Paul
`
`On 9/26/07 8:32 AM, "Hebestadt, Rosmarie"
`
`Page 1 of 8
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 14 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 14 of 28
`
`

`

`> Dear Paul,
`
`> >
`
`Werner will be back in the late afternoon. He is waiting for your phone
`call
`
`> this evening at 07:00 pm. Please call his office numbe‘
`
`> or his mobilC—
`
`Best regards,
`
`Rosmarie
`
`> >
`
`> >
`
`.
`
`> >
`
`Rosmarie Hebestadt, lVIA
`> Personal Assistant
`
`> University of Giessen Lung Center (UG-LC)
`
`
`
` >
`
`TELEPHONE:
`
`> >
`
`_ >
`
`----- Ursprfingliche Nachricht-----
`> Von: PaulMahm—
`> Gesendet: l\/Iittwoch, 26. September 2007 12:25
`
`> TELEFAX:
`
`Page 2 of 8
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 15 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 15 of 28
`
`

`

`EXHIBIT 6
`
`Fri. Oct 26, 2007 1:27 PM
`\_
`Subject: MDI Patent
`Date: Monday, October 1, 2007 4:47 PM
`
`From: Paul Mahon
`
`
`To: "Seeger, Werner"
`
`Cc: Martine Rothblatt
`, Andrew Fisher
`<—
`Conversation: MDI Patent
`
`Dear Werner,
`
`I apologize for the delay in responding to the concerns you raised in your
`conversation with Andy Fisher lastweek,—
`
`You know that we are big believers in you and the remarkable work that you
`and your colleagues perform
`
`
`
`
`
`we are surprised that a question of compensation has arisen at this point,
`particularly since all of the previous assignment documents were executed
`by
`all the inventors without question or reservation.
`
`My review of the file indicates that
`
`Page 1 of 3
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 16 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 16 of 28
`
`

`

`W S
`
`ince thework— was done with drug substance
`
`and
`
`financial support provided by Lung Rx under the study agreements then in
`place between Lung Rx and Giessen, we believe that ownsership falls within
`the terms of those agreements. We note that Giessen acknowledged that the
`work was "supported by Lung Rx" in the publication it later submitted,
`which
`
`
`
`is entirely consistent with our approach to our successful collaboration.
`
`—
`
`We hope you will agree that, in this limited situation and under these
`particular circumstances, a reasonable approach is to confirm 'your previous
`assignment of the intellectual pro nerty rights to Lung Rx.
`
`
`
`
`Please let us know if you are agreeable to proceeding on this basis.
`
`Best,
`
`Paul
`
`Paul Mahon
`
`United Therapeutics Corporation
`
`Page 2 of 3
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 17 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 17 of 28
`
`

`

`ASSIGNMENT - WORLDWIDE
`
`EXHIBIT 7
`
`Atty. Dkt. No. 080618-0463
`
`For good and valuable consideration, the receipt and sufficiency of which are hereby
`acknowledged, each undersigned inventor (hereinafier referred to singly and collectively as
`"ASSIGNOR") has sold, assigned, and transferred, and by these presents hereby sells, assigns,
`and transfers, unto
`
`United Therapeutics Corporation
`1110 Spring Street
`Silver Spring, MD 20910
`
`(hereinafter referred to as "ASSIGNEE") its successors and assigns, the full and exclusive
`right, title and interest for the United States, its territories and possessions, and all foreign
`countries in and to this invention relating to
`
`METERED DOSE INHALER TREPROSTINIL TREATMENT
`FOR PULMONARY HYPERTENSION
`
`as set forth in this United States Patent Application
`
`check one
`
`] executed concurrently herewith,
`[
`,
`] executed on
`'
`[
`[ X ] Serial No. 60/§00,016 Filed 5(15/2006
`
`as well as in and to (a) all improvements and modifications of the above-identified invention
`or inventions; (b) the above-identified application and all other applications for Letters Patent
`of the United States and countries foreign thereto for above-identified invention or inventions
`and all improvements and modifications thereof, (0) all Letters Patent which may issue from
`said applications in the United States and countries foreign thereto, (d) all divisions,
`continuations, reissues, and extensions of said applications and Letters Patent, and (e) the
`right to claim for any of said applications the full benefits and priority rights under the
`lntemational Convention and any other international agreement to which the United States
`adheres; such right, title, and interest to be held and enjoyed by ASSIGNEE, its successors
`and assigns, to the filll end of the term or terms for which any and all such Letters Patent may
`be granted as fully and entirely as would have been held and enjoyed by ASSIGNOR had this
`Assignment not been made.
`
`ASSIGNOR HEREBY AUTHORIZES ASSIGNEE to file patent applications inlany
`or all countries on the above-identified invention or inventions in the name of the undersigned
`or in the name of ASSIGNEE or otherwise as ASSIGNEE may deem advisable under the
`lntemational Convention or otherwise.
`
`ASSIGNOR HEREBY AUTHORIZES AND REQUESTS the Commissioner of
`Patents and Trademarks to issue said Letters Patent to ASSIGNEE as assignee of the entire
`interest, for the sole use and benefit of ASSIGNEE, its successors and assigns.
`
`WASH_1628492.1
`
`Page 1 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 18 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 18 of 28
`
`

`

`
`
`Atty. Dkt. No. 080618-0463
`
`ASSIGNOR HEREBY AGREES (a) to communicate to ASSIGNEE, its successors
`and assigns, or their representative or agents, all facts and information known or available to
`ASSIGNOR respecting said invention or inventions, improvements, and modifications
`including evidence for interference, reexamination, reissue, opposition, revocation, extension,
`or infringement purposes or other legal, judicial, or administrative proceedings, whenever
`requested by ASSIGNEE; (b) to testify in person or by affidavit as required by ASSIGNEE,
`its successors and assigns, in any such proceeding in the United States or a country foreign
`thereto; (c) to execute and deliver, upon request by ASSlGNEE. all lawful papers including,
`but not limited to. original, divisional, continuation, and reissue applications, renewals,
`assignments, powers of attorney, oaths, affidavits, and declarations, depositions; and (d) to
`provide all reasonable assistance to ASSIGNEE, its successors and assigns, in obtaining and
`enforcing proper title in and protection for said invention or inventions, improvements, and
`modifications under the intellectual property laws of the United States and countries foreign
`thereto.
`
`ASSIGNOR HEREBY REPRESENTS AND WARRANTS that ASSIGNOR has the
`
`full and unencumbered right to sell, assign, and transfer the interests sold, assigned, and
`transferred herein, and that ASSIGNOR has not executed and will not execute any document
`or instrument in conflict herewith.
`
`ASSIGNOR HEREBY GRANTS to the law firm of Foley & Lardner LLP the power
`and authority to insert in this Assignment any further identification which may be necessary
`or desirable to comply with the rules of the US. Patent and Trademark Office for recordation
`ofthis Assignment.
`
`ASSIGNOR UNDERSTANDS AND AGREES that the attorneys and agents of the
`law firm of Foley & Lardner LLP do not personally represent ASSIGNOR OR
`AS SIGNOR’s legal interests, but instead represent the interests of ASSlGNEE; since said
`attorneys and agents cannot provide legal advice to ASSIGNOR with respect to this
`Assignment, ASSIGNOR acknowledges its right to seek its own independent legal counsel.
`
`WASH_1628492.1
`
`Page 2 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 19 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 19 of 28
`
`

`

`
`
`r
`
`3'4””- t
`
`,2oié.
`
`Atty. Dkt. No. 080618-0463
`
`Executed this __Z_X day of
`
`,
`sum (If—kw
`)ss.
`County of
`__ _.____—)
`
`, before me. a notary public in and for said county. appeared HORST
`20
`day of
`On this
`OLSCHEWSKL who is personally known to me to be the same person whose name is subscribed to the foregoing instrument. and he/she
`acknowledged that helshe signed. sealed, and delivered the said instrument as his/her free and voluntary act for the uses and purposes
`therein set forth.
`
`HORST OLSCHEWSKI
`
`Notary Public
`
`My Commission Expires:
`
`ll
`
`day of 3 V 3F
`
`, 20fl.
`
`(Seal)
`
`Executed this
`
`(Seal)
`
`..
`)
`0 ’% GAD" H‘
`State of
`)sn.
`‘
`CountyMM
`, 20‘__, before me. a notary public in and for said county, appeared ROBERT
`On this
`day of
`ROSClGNO. who is personally known to me to be the same person whose name is subscribed to the foregoing instrument. and he/she
`acknowledged that hdshe signed, sealed, and delivered the said instrument as his/her free and voluntary act for the uses and purposes
`therein set forth.
`
`ROBE
`
`ROSCIGNO
`
`Notary Public
`
`My Commission Expires:
`
`WASH_1628492.1
`
`Page 3 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 20 of 28
`
`
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 20 of 28
`
`

`

`Atty. Dkt. No. 080618-0463
`
`TL
`
`Executed this 2 ‘l day of A a \ 3
`
`, 20:5.
`
`
`~,_
`Mil
`
`
`LEWIS J. RUBIN
`
`mELM)- )3
`
`County affix—“b
`
`, before me. a notary public in and for said county, appeared LEWIS J,
`20
`On this
`day of
`RUBIN, who is personally known to me to be the same person whose name is subscribed to the foregoing instrument, and helshe
`acknowledged that helshe signed, sealed, and delivered the said instrument as his/her he and voluntary act for the uses and purposes
`therein set forth.
`
`(Seal)
`
`Executed this
`
`
`Notary Public
`
`My Commission Expires:
`
`day of 2M /5 , 20_0_(
`/'vAdams! 5‘ 2/04“ «4/
`
`
`
`THOMAS SCHMEHL
`
`State of
`
`County of
`
`_____—)
`)ss.
`' __—__)
`
`, before me, a notary public in and for said county, appeared THOMAS
`20
`day of
`On this
`SCHMEHL. who is personally known to me to be the same person whose name is subscribed to the foregoing instrument, and helshe
`acknowledged that helshe signed. sealed. and delivered the said instrument as his/her free and voluntary act for the uses and purposes
`therein set rm.
`
`.
`
`(Se-l)
`
`
`Notary Public
`
`My Commission Expires:
`
`WASH_1628492.1
`
`Page 4 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 21 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 21 of 28
`
`

`

`.0806l8-0463
`
`,
`
`State of
`
`County of
`
`..______..___.._)
`)ss.
`_ ..—_)
`
`
`, before me. a notary public in and for said county. appeared WERNER
`20
`day of
`On this
`SEEGER, who is personally known to me to be the same person whose name is subscribed to the foregoing instrument. and helshe
`acknowledged that helshe signed. sealed. and delivered the said instrument as his/her free and voluntary act for the use: and purposes
`therein set forth.
`
`(Seal)
`
`Executed this Z 61“day of 3M ‘3
`
`State of___________—)
`)5:
`_____...—) .
`
`County of
`
`
`Notary Public
`
`My Commission Expires:
`
`, 2025
`
` CARL STERRlT’l‘
`
`, before me. a notary public in and for said county, appeared CARL
`, 20
`day of
`On this
`STERITT. who is personally known to me to be the same person whose name is subscribed to the foregoing instrument. and holsho
`acknowledged that tie/she signed, salad, and delivered the said instmment as hisIher free and voluntary act for the uses and purposes
`therein set forth.
`
`(Seal)
`
`
`Notary Public
`
`My Commission Expires:
`
`WASH_1623492.1
`
`Page 5 of 6
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 22 of 28
`
`WATSON LABORATORIES, INC. , IPR2017-01622, Ex. 1172, p. 22 of 28
`
`

`

`
`
`Executed this 2Zféday of
`
`Atty. Dkt. No. 080618-0463
`
`) (fié , 20&
` R BERT VOSWINCKEL
`
`County of
`
`State of _________)
`)9.
`._. ___