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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LIQUIDIA TECHNOLOGIES, INC.,
`Petitioner
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`v.
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`UNITED THERAPEUTICS CORPORATION,
`Patent Owner
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`
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`Case No. IPR2021-00406
`U.S. Patent No. 10,716,793
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`PETITIONER’S OBJECTIONS TO EVIDENCE
`UNDER 37 C.F.R. § 42.64(b)(1)
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`IPR2021-00406
`U.S. Patent No. 10,716,793
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`Pursuant to 37 C.F.R. §§ 42.61(a) and 42.64(b)(1), and the Federal Rules
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`of Evidence (“FRE”), the Petitioner Liquidia Technologies, Inc. hereby serves and
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`submits the following objections to evidence submitted by Patent Owner
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`accompanying Patent Owner’s Sur-Reply filed and served on March 16, 2022.
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`These objections are timely because they are filed within five business days of
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`service of Patent Owner’s Sur-Reply.
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`I.
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`IDENTIFICATION OF CHALLENGED EXHIBITS
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`A. Appended Ex. 2092 to Hall-Ellis Deposition (Ex. 2094)
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`For context, Patent Owner’s produced Ex. 2092 for the first time during the
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`March 11, 2022 deposition of Petitioner’s expert librarian, Dr. Hall-Ellis, and then
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`appended it to the Deposition Transcript (Ex. 2094) and then filed the Deposition
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`Transcript as part of the Patent Owner Sur-Reply.1 Appended Ex. 2092 is objected
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`to as new evidence filed with the Patent Owner’s Sur-Reply in violation of Rule
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`1 Patent Owner appears to have filed two Exhibit 2092s. The first was filed as the
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`“Mandy Kim Bio” on January 5, 2022. The other is a British Library email dated
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`April 20, 2018 that was first produced during the March 11, 2022 deposition of Dr.
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`Hall-Ellis. The Objection above is directed to the appended email and not the
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`“Mandy Kim Bio.”
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`1
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`IPR2021-00406
`U.S. Patent No. 10,716,793
`
`42.23(b). Appended Ex. 2092 is also objected to as violating the Board’s March 3,
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`2022 Order, which expressly denied Patent Owner’s request for authorization to
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`submit this same type of evidence with its Sur-Reply. (Order, 5.) The Order stated
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`that “there is no right to submit additional evidence with Patent Owner’s Sur-
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`Reply” and explained that the Board was “not persuaded that we should waive the
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`limits imposed on the Sur-Reply by Rule 42.23(b).” (Order, 5-4; see also Ex. 2104
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`(Telephonic Hearing Transcript on 3/1/2022), 24:2-23 (the Board indicating that
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`submitting new evidence
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`in
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`this manner provides an “opportunity for
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`gamesmanship.”).)
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`Appended Ex. 2092 is objected to under Fed. R. Evid. 106 because it is an
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`incomplete document. The email cuts off on page 2 – all of the prior email
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`correspondence between the British Library contact and Patent Owner’s counsel’s
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`research contact appear to be deleted.
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`Appended Ex. 2092 is objected to under Fed. R. Evid. 901 because there is
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`insufficient evidence to support a finding that the exhibit is what Petitioner claims
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`it is. For example, it is unclear how, why or in what context this email originated
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`(in part because the email chain is incomplete) and in what capacity the British
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`Library contact is responding.
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`To the extent appropriate, Petitioner also objects to any portion of Patent
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`Owner’s Sur-Reply that discusses, references and/or relies on appended Ex. 2092
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`2
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`IPR2021-00406
`U.S. Patent No. 10,716,793
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`(see, e.g., Sur-Reply, 7-9), and further objects to any portion of Dr. Hall-Ellis
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`Deposition Transcript (Ex. 2094) discussing appended Ex. 2092 (see, e.g., Ex.2094,
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`18:22-24:7).
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`B. Appended Ex. 2093 to Hall-Ellis Deposition (Ex. 2094)
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`Ex. 2093 was also produced for the first time during Dr. Hall-Ellis’ March
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`11, 2022 deposition and was appended to and then filed with the Deposition
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`Transcript (Ex. 2094) as part of the Patent Owner Sur-Reply.2 Appended Ex. 2093
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`is objected to as new evidence filed with the Patent Owner’s Sur-Reply in violation
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`of Rule 42.23(b). It is further objected to as violating the Board’s March 3, 2022
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`Order. (Order, 5.)
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`To the extent appropriate, Petitioner also objects to any portion of Patent
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`Owner’s Sur-Reply that discusses, references and/or relies on appended Ex. 2093
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`(see, e.g., Sur-Reply, 10-11), and further objects to any portion of Dr. Hall-Ellis
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`2 Patent Owner also appears to have filed two Exhibit 2093s. The first was filed as
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`the “Declaration of Mandy Kim” on January 5, 2022. The other is a journal article
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`that was first produced during the March 11, 2022 deposition of Dr. Hall-Ellis. The
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`Objection above is directed to the appended journal article and not the “Declaration
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`of Mandy Kim.”
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`3
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`IPR2021-00406
`U.S. Patent No. 10,716,793
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`Deposition Transcript (Ex. 2094) discussing appended Ex. 2093 (see, e.g., Ex.2094,
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`32:11-41:16).
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`C.
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`Exs. 2100-2103
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`Patent Owner produced Exs. 2100-2103 for the first time during the March
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`14, 2022 deposition of Petitioner’s technical expert, Dr. Igor Gonda. Exs. 2100-
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`2103 were then filed as part of the Patent Owner Sur-Reply and simply identified
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`as exhibits to the deposition. Exs. 2100-2103 are objected to as new evidence filed
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`with the Patent Owner’s Sur-Reply in violation of Rule 42.23(b). Exs. 2100-2103
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`are also objected to as violating the Board’s March 3, 2022 Order. (Order, 5.)
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`Exs. 2100-2103 are objected to as lacking authentication under Fed. R. Evid.
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`901, as there is no indication about the origins or dates of public availability for
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`these documents.
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`To the extent appropriate, Petitioner also objects to any portion of Patent
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`Owner’s Sur-Reply that discusses, references and/or relies on Exs. 2100-2103 (see,
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`e.g., Sur-Reply, 14, 16), and further objects to any portion of Dr. Gonda’s
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`Deposition Transcript (Ex. 2099) discussing Exs. 2100-2103 (see, e.g., Ex.2099,
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`164:1-203:11).
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`II. CONCLUSION
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`For the foregoing reasons, Petitioner objects to Exhibits 2092 and 2093
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`4
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`IPR2021-00406
`U.S. Patent No. 10,716,793
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`appended to the Hall-Ellis Deposition, and Exhibits 2100, 2101, 2102 and 2013.
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`Dated: March 23, 2022
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
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`Respectfully submitted,
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`
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`By:
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`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`Counsel for Petitioner
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`5
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`By:
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`CERTIFICATE OF SERVICE
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`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`Counsel for Petitioner
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`Pursuant to 37 C.F.R. §§42.6(e)(4)(i) et seq., a complete copy of the
`attached PETITIONER’S OBJECTIONS TO EVIDENCE UNDER 37 C.F.R.
`§ 42.64(b)(1) and related documents are being served via email on the 23rd day of
`March 2022, upon Patent Owner’s attorneys of record:
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`UT-793@foley.com
`Stephen B. Maebius (smaebius@foley.com)
`FOLEY & LARDNER LLP
`UTCvLiquidia-IPR@mwe.com
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`Dated: March 23, 2022
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
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`6
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