From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Kannappan, Deepa
`Maebius, Steve; Trials
`zLiquidiaIPR; UT-793; Houston, Michael R.; Doug Carsten; Milch, Erik
`RE: IPR2021-00406 || Request for Authorization to File Motion to Submit Supplemental Information under 37
`CFR 42.123(b)
`Thursday, May 12, 2022 2:18:14 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`If the Board were inclined to hear Patent Owner’s request below, Petitioner requests, in parallel,
`authorization to file a motion to submit supplemental information under 37 CFR 42.123(b) to
`provide to the Board a copy of:
`1. Testimony of Patent Owner’s experts Dr. Clark and Dr. Smyth from the district court trial in D.
`Del, Civ. A. No. 1:20-cv-00755, which is inconsistent with Patent Owner’s non-obviousness
`positions and Patent Owner’s Response at pp. 38-40 in relation to claims 4, 6 and 7; and
`2. Patent Owner’s forthcoming responsive brief, due June 1, 2022, to Petitioner’s Post-Trial
`Opening Brief Regarding Invalidity of U.S. Patent Nos. 9,593,066 and 10,716,793, which
`Petitioner anticipates to be the same.
`
`Patent Owner opposes this request. Petitioner can address this issue on the call requested below by
`Patent Owner, or at the oral argument if preferable.
`
`Sincerely,
`Deepa Kannappan
`Admitted pro hac vice
`Counsel for Petitioner
`
`Deepa Kannappan
`Cooley LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`+1 650 843 5673 office
`+1 650 849 7400 fax
`dkannappan@cooley.com
`
`www.cooley.com/dkannappan
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`IPR2021-00406
`Ex. 3002
`
`

`

`From: Maebius, Steve <SMaebius@foley.com>
`Sent: Wednesday, May 11, 2022 7:06 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: zLiquidiaIPR <zLiquidiaIPR@cooley.com>; UT-793 <UT-793@foley.com>; Houston, Michael R.
`<MHouston@foley.com>; Doug Carsten <dcarsten@mwe.com>; Milch, Erik <emilch@cooley.com>
`Subject: RE: IPR2021-00406 || Request for Authorization to File Motion to Submit Supplemental
`Information under 37 CFR 42.123(b)
`Importance: High
`
`[External]
`
`Dear Board,
`
`Patent Owner requests authorization to file a motion to submit supplemental
`information under 37 CFR 42.123(b) to provide to the Board a copy of Petitioner’s
`Post-Trial Opening Brief Regarding Invalidity of U.S. Patent Nos. 9,593,066 and
`10,716,793, D. Del Civ. A. No. 1:20-cv-00755, Dkt Entry 406, filed on May 4, 2022,
`which is inconsistent with Petitioner’s slide 12, served on May 9th and which supports
`the Patent Owner’s Response at pp. 38-40 in relation to claims 4, 6 and 7. Petitioner
`opposes this request.
`
`If the Board wishes to schedule a call with the parties ahead of the oral argument to
`discuss this request, the parties are available between 1 and 5 pm EST on May 12th.
`Alternatively, Patent Owner can address the issue at the oral argument if preferable.
`
`Sincerely,
`Steve Maebius
`Reg. No. 35,264
`Counsel for Patent Owner
`
`Stephen B. Maebius
`Foley & Lardner LLP
`3000 K St., NW
`Washington, DC 20007
`Office 202.672.5569
`Cell 202.352.0676
`
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