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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIQUIDIA TECHNOLOGIES, INC.,
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`Petitioner,
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`v.
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`UNITED THERAPEUTICS CORPORATION,
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`Patent Owner.
`
`
`Case IPR2021-00406
`Patent 10,716,793
`
`
`PETITIONER’S IDENTIFICATION OF EXHIBITS AND PORTIONS OF
`PATENT OWNER’S SUR-REPLY THAT EXCEED THE SCOPE OF
`ALLOWABLE SUR-REPLY EVIDENCE
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Petitioner’s Identification of Improper
`Evidence and Arguments
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`Pursuant to the Board’s email dated March 25, 2022, Petitioner identifies the
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`below Exhibits and portions of Patent Owner’s Sur-Reply as beyond the scope of
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`new evidence authorized by 37 C.F.R. § 42.23(b) and page 73 of the Trial Practice
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`Guide, and in violation of the Board’s March 3, 2022 Order denying Patent Owner’s
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`request for authorization to submit this type of evidence with its Sur-Reply. 37
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`C.F.R. § 42.23(b) (A “sur-reply . . . may not be accompanied by new evidence other
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`than deposition transcripts of the cross-examination of any reply witness.”); Paper
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`50, 5 (“Patent Owner’s request for authorization to submit evidence with its Sur-
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`Reply beyond the limits placed on that evidence by 37 C.F.R. § 42.23(b) is denied.”);
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`see also Ex. 2104, 24:2-25:23 (the Board indicating that submitting new evidence
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`through depositions instead provides an “opportunity for gamesmanship” to
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`circumvent the Board’s ruling).
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`Exhibits
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`1) Ex. 2092 (attached to Ex. 2094 at 63-651)
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`1 This is a different exhibit than what Patent Owner filed as Exhibit 2092, which is
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`the “Biography of Mandy H. Kim.” Patent Owner appears to have duplicated exhibit
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`numbering and attached a different Exhibit 2092 to Exhibit 2094 (3/11/2022
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`Transcript of the Deposition of Dr. Hall-Ellis). Petitioner identifies the Exhibit 2092
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`attached to Exhibit 2094 as improper.
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`1
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`IPR2021-00406
`Patent 10,716,793 B2
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`2) Ex. 2093 (attached to Ex. 2094 at 66-772)
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`Petitioner’s Identification of Improper
`Evidence and Arguments
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`3) Ex. 2094, 20:22-24:7, 32:11-36:18 (discussing Exs. 2092 and 2093)
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`4) Ex. 2100 (entered as Tab 6 in Ex. 2099, 3/14/22 Gonda IPR deposition)
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`5) Ex. 2101 (entered as Tab 5 in Ex. 2099, 3/14/22 Gonda IPR deposition)
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`6) Ex. 2102 (entered as Tab 9 in Ex. 2099, 3/14/22 Gonda IPR deposition)
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`7) Ex. 2103 (entered as Tab 4 in Ex. 2099, 3/14/22 Gonda IPR deposition)
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`8) Ex. 2099, 163:23-176:5, 180:20-185:10, 198:8-201:6, 201:18-203:9
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`(discussing Exs. 2100, 2101, 2102, and 2103)
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`Portions of Patent Owner’s Sur-Reply Replying on the Above Exhibits
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`1) Relying on the portions of Ex. 2094 related to Exs. 2092 and 2093:
`a. P.8: “another librarian at the British Library” to “the Abstracts
`themselves were not available unless patrons somehow had the
`specific citations.”
`b. P. 8-9: “Those printed indices” to “available (EX2094, 64).”
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`2 This is a different exhibit than what Patent Owner filed as Exhibit 2093, which is
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`the “Declaration of Mandy H. Kim in Support of Motion for Pro Hac Vice
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`Admission.” Patent Owner appears to have duplicated exhibit numbering and
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`attached a different Exhibit 2093 to Exhibit 2094 (3/11/2022 Transcript of the
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`Deposition of Dr. Hall-Ellis). Petitioner identifies the Exhibit 2093 attached to
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`Exhibit 2094 as improper.
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`2
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`IPR2021-00406
`Patent 10,716,793 B2
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`Petitioner’s Identification of Improper
`Evidence and Arguments
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`c. P. 10: “she admitted” to “Sulica (see EX2094, 30:19-36:16).”
`d. P. 10-11: “Similarly, Sulica” to “in the TRIUMPH study group);”
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`2) Relying on Exs. 2100-2103:
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`a. P.14: “EX2102, 27 (DeVilbiss manual: output rates of 3.0 and 2.5
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`mL/min)”
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`b. P.14: “EX2100, 28; EX2101, 28 (Multisonic manual: rates of 0.6 and
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`0.5 mL/min)”
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`c. P. 16: “But if the” to “EX2100, 28;”
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`d. P.16: “Lieberman 2006” to “respectively.”
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`Dated: April 7, 2022
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
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`
`
`By:
`
`
`
`
`
`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`Counsel for Petitioner
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`3
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`
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`IPR2021-00406
`Patent 10,716,793 B2
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`Petitioner’s Identification of Improper
`Evidence and Arguments
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`CERTIFICATE OF SERVICE
`foregoing
`the
`The undersigned hereby certifies
`that a copy of
`PETITIONER’S IDENTIFICATION OF EXHIBITS AND PORTIONS OF
`PATENT OWNER’S SUR-REPLY THAT EXCEED THE SCOPE OF
`ALLOWABLE SUR-REPLY EVIDENCE was served on counsel of record on
`April 7, 2022, by delivering a copy via email to the counsel of record for the Patent
`Owner at the following address:
`
`UT-793@foley.com
`Stephen B. Maebius (smaebius@foley.com)
`FOLEY & LARDNER
`UTCvLiquidia-IPR@mwe.com
`
`
`
`Dated: April 7, 2022
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
`
`
`
`
`By:
`
`
`
`
`
`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`Counsel for Petitioner
`
`
`
`
`
`