`
`
`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 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
`
`Pursuant to the Board’s email dated March 25, 2022, Petitioner identifies the
`
`below Exhibits and portions of Patent Owner’s Sur-Reply as beyond the scope of
`
`new evidence authorized by 37 C.F.R. § 42.23(b) and page 73 of the Trial Practice
`
`Guide, and in violation of the Board’s March 3, 2022 Order denying Patent Owner’s
`
`request for authorization to submit this type of evidence with its Sur-Reply. 37
`
`C.F.R. § 42.23(b) (A “sur-reply . . . may not be accompanied by new evidence other
`
`than deposition transcripts of the cross-examination of any reply witness.”); Paper
`
`50, 5 (“Patent Owner’s request for authorization to submit evidence with its Sur-
`
`Reply beyond the limits placed on that evidence by 37 C.F.R. § 42.23(b) is denied.”);
`
`see also Ex. 2104, 24:2-25:23 (the Board indicating that submitting new evidence
`
`through depositions instead provides an “opportunity for gamesmanship” to
`
`circumvent the Board’s ruling).
`
`Exhibits
`
`1) Ex. 2092 (attached to Ex. 2094 at 63-651)
`
`
`1 This is a different exhibit than what Patent Owner filed as Exhibit 2092, which is
`
`the “Biography of Mandy H. Kim.” Patent Owner appears to have duplicated exhibit
`
`numbering and attached a different Exhibit 2092 to Exhibit 2094 (3/11/2022
`
`Transcript of the Deposition of Dr. Hall-Ellis). Petitioner identifies the Exhibit 2092
`
`attached to Exhibit 2094 as improper.
`
`1
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`2) Ex. 2093 (attached to Ex. 2094 at 66-772)
`
`Petitioner’s Identification of Improper
`Evidence and Arguments
`
`3) Ex. 2094, 20:22-24:7, 32:11-36:18 (discussing Exs. 2092 and 2093)
`
`4) Ex. 2100 (entered as Tab 6 in Ex. 2099, 3/14/22 Gonda IPR deposition)
`
`5) Ex. 2101 (entered as Tab 5 in Ex. 2099, 3/14/22 Gonda IPR deposition)
`
`6) Ex. 2102 (entered as Tab 9 in Ex. 2099, 3/14/22 Gonda IPR deposition)
`
`7) Ex. 2103 (entered as Tab 4 in Ex. 2099, 3/14/22 Gonda IPR deposition)
`
`8) Ex. 2099, 163:23-176:5, 180:20-185:10, 198:8-201:6, 201:18-203:9
`
`(discussing Exs. 2100, 2101, 2102, and 2103)
`
`Portions of Patent Owner’s Sur-Reply Replying on the Above Exhibits
`
`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).”
`
`
`2 This is a different exhibit than what Patent Owner filed as Exhibit 2093, which is
`
`the “Declaration of Mandy H. Kim in Support of Motion for Pro Hac Vice
`
`Admission.” Patent Owner appears to have duplicated exhibit numbering and
`
`attached a different Exhibit 2093 to Exhibit 2094 (3/11/2022 Transcript of the
`
`Deposition of Dr. Hall-Ellis). Petitioner identifies the Exhibit 2093 attached to
`
`Exhibit 2094 as improper.
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Petitioner’s Identification of Improper
`Evidence and Arguments
`
`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);”
`
`2) Relying on Exs. 2100-2103:
`
`a. P.14: “EX2102, 27 (DeVilbiss manual: output rates of 3.0 and 2.5
`
`mL/min)”
`
`b. P.14: “EX2100, 28; EX2101, 28 (Multisonic manual: rates of 0.6 and
`
`0.5 mL/min)”
`
`c. P. 16: “But if the” to “EX2100, 28;”
`
`d. P.16: “Lieberman 2006” to “respectively.”
`
`
`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
`
`3
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Petitioner’s Identification of Improper
`Evidence and Arguments
`
`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
`
`
`
`
`
`
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