UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LIQUIDIA TECHNOLOGIES, INC.,
`
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`
`Patent Owner.
`
`
`Case IPR2021-00406
`Patent 10,716,793
`
`
`PETITIONER’S IDENTIFICATION OF PORTIONS OF PATENT
`OWNER’S RESPONSE TO WHICH IDENTIFIED REPLY EVIDENCE
`AND ARGUMENTS ARE RESPONSIVE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`LIQUIDIA TECHNOLOGIES, INC.,
`
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`
`Patent Owner.
`
`
`Case IPR2021-00406
`Patent 10,716,793
`
`
`PETITIONER’S IDENTIFICATION OF PORTIONS OF PATENT
`OWNER’S RESPONSE TO WHICH IDENTIFIED REPLY EVIDENCE
`AND ARGUMENTS ARE RESPONSIVE
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`
`
`Pursuant to the Board’s email dated February 15, 2022, and in compliance
`
`with page 74 of the Trial Practice Guide, Petitioner identifies by page number and
`
`exemplary language the portions of Patent Owner’s Response to which the objected-
`
`to exhibits and arguments (identified by Patent Owner in Paper 47) are responsive.
`
`1) The following are responsive to Patent Owner Response pages 12-14, e.g.:
`
`Petitioner has failed to show that either Voswinckel JAHA (EX1008)
`or Voswinckel JESC (EX1007) were received by a library before the
`priority date. Neither reference contains a “received by” or “accepted”
`stamp or notation . . . . EX2041[1], ¶¶13, 18-19, 33. [ . . . ] Importantly,
`supplements compiling conference abstracts can sometimes publish
`years after the conference in question, putting the Circulation and EHJ
`Supplements’ availability (if any) past the priority date. EX2041, ¶¶10-
`11, 30-31. . . . Accordingly, Petitioner has not provided any evidence
`showing if or when Circulation and EHJ Supplements were actually
`received by a library. Id. at ¶¶14, 27, 33; see also EX2043, 150:16-
`151:7, 157:6-11, 217:11-13, 222:1-10.
`• EX1089-1096, 1116, 1119, 1123-1129
`• Reply citations Nos. 1-3, 5-8 in Paper 47
`
`
`1 EX2041 is the Declaration of Ms. Pilar Wyman, to which the objected-to exhibits
`
`and arguments also respond.
`
`1
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`
`
`• EX1106 citations Nos. 1-3, 5-8 in Paper 472
`• EX1112 citations to EX1089-1096, 1116, 1119, 1123-1129
`2) The following are responsive to Patent Owner Response pages 14-16, e.g.:
`
`Petitioner has not offered any evidence that Voswinckel JAHA and
`Voswinckel JESC were meaningfully catalogued or indexed at a library
`or in a database before the priority date, or why and how a POSA would
`search for or find the Circulation and EHJ Supplements. See EX2041,
`¶¶16-17, 34-37. Even if a POSA found the Supplements, Voswinckel
`JAHA shares the page with three-and-a-half other abstracts and is just
`one of many thousands of abstracts spanning 1,102 pages in the full
`version of the Circulation Supplement. Id. at ¶10. Petitioner has not
`submitted any evidence that the Circulation Supplement contained a
`table of contents or subject matter index through which the cited
`abstract (number 1,414) could be located. Id. at ¶¶7-8, 25-26. Similarly,
`Voswinckel JESC cited by Petitioner shares the page with three other
`abstracts and is just one of 3,850 abstracts spanning over 700 pages in
`the full version of the EHJ Supplement. Id. at ¶28. Although there is a
`list of “Contents” included within Voswinckel JESC, it is not organized
`alphabetically or otherwise ordered by subject. Id. at ¶35. As a result,
`Petitioner has not shown that the POSA could locate either Voswinckel
`JAHA or JESC using reasonable diligence.
`• EX1092, 1095, 1113
`
`
`2 Other than footnote 4, all identified citations to EX1091 and EX1093 are
`
`accompanied by identical citations to EX1007 and EX1008 filed with the Petition.
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`
`
`• Reply citations Nos. 4, 7, 11 in Paper 47
`• EX1106 citations Nos. 4, 7, 11 in Paper 47
`• EX1112 citations to EX1092, 1095, 1113
`3) The following are responsive to Patent Owner Response pages 12 and 14-17, e.g.:
`
`[A] reference is considered publicly accessible only if it was
`“disseminated or otherwise made available to the extent that persons
`interested and ordinarily skilled in the subject matter or art exercising
`reasonable diligence[] can locate it.” [. . .] Petitioner has not shown that
`the POSA could locate either Voswinckel JAHA or JESC using
`reasonable diligence. [. . .] It is undisputed that Voswinckel JAHA and
`Voswinckel JESC remain difficult to find even today. [. . .] Ms.
`Wyman searched all of the databases cited by Dr. Hall-Ellis (see id. at
`41:1-42:4; 242:11-243:18 (listing Ovid, PubMed, MEDLINE, Index
`Medicus, and Chemical Abstracts)), but neither abstract is listed in any
`of these databases today[.] . . . EX2041, ¶¶5, 16-17, 37.
`• EX1104-1105, 1117-1118, 1120-1122
`• Reply citations Nos. 9-10 in Paper 47
`• EX1106 citation No. 9-10 in Paper 47
`• EX1112 citations to EX1104, 1117-1118, 1120-1122
`4) The following are responsive to Patent Owner Response pages 16-17, e.g.:
`
`Moreover, the Circulation Supplement cannot be found on the
`Circulation Journal’s website, AHA online archives, or even in a list of
`supplements to the journal. [EX2041] at ¶¶12, 15.
`• EX1114-1115
`• EX1112 citations to EX1114-1115
`
`3
`
`
`
`
`
`Respectfully submitted,
`
`/Eric B. Milch/
`Erik B. Milch
`Registration No. 42,887
`Counsel for Petitioner
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Dated: February 28, 2022
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (703) 456-8573
`Fax: (703) 338-4684
`
`
`4
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`
`
`CERTIFICATE OF SERVICE
`foregoing
`the
`The undersigned hereby certifies
`that a copy of
`PETITIONER’S
`IDENTIFICATION OF PORTIONS OF PATENT
`OWNER’S RESPONSE TO WHICH IDENTIFIED REPLY EVIDENCE AND
`ARGUMENTS ARE RESPONSIVE was served on counsel of record on February
`28, 2022, for the Patent Owner at the following address:
`
`Stephen B. Maebius
`smaebius@foley.com
`UT-793@foley.com
`UTCvLiquidia-IPR@mwe.com
`
`Dated: February 28, 2022
`
`
`
`/Erik B. Milch/
`Erik B. Milch (Reg. No. 42,887)
`Cooley LLP
`
`
`
`
`
`
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