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 REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`EXHIBITS 2092, 2100, 2101, 2102, AND 2103
`
`
`
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`EXHIBITS 2092, 2100, 2101, 2102, AND 2103
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`I. EX2092: British Library Communication
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`Petitioner’s Reply ISO
`Motion to Exclude
`
`First, Patent Owner (“PO”)’s reliance on FRE 901(b)(4) overlooks what PO
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`does not contest: that the document is incomplete (Paper 69, 2-3), leaving the
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`Petitioner and Board with no reason to believe that the email “is what the proponent
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`claims it is.” FRE 901(a). Unlike EX2092, the authenticated email in U.S. v.
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`Siddiqui, 235 F.3d 1318 (11th Cir. 2000) was complete and corroborated by
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`deposition testimony of individuals included in the email chain. Siddiqui, 235 F.3d
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`at 1322-23. Here, PO prevented Petitioner from cross-examining any party subject
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`to the email chain by first identifying EX2092, and supplemental evidence EX2105
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`(Declaration from Foley & Lardner’s Research Librarian James DiNatale), after
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`Petitioner submitted its Reply. See Hamilton Techs. LLC v. Fleur Tehrani, IPR2020-
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`01199, Paper 57 at 52 (PTAB Dec. 28, 2021). Unlike Mr. DiNatale’s declaration,
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`the communications in U.S. v. Gagliardi, 506 F.3d 140 (2d Cir. 2007) were
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`authenticated by live trial testimony and cross-examination. Id. at 151.
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`Second, contrary to PO’s contention, EX2092 is not admissible because it was
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`used in a different proceeding (IPR2017-01621) involving a different patent and
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`different Petitioner. Paper 69, 5-7. The admissibility of the document underlying
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`EX2092 was disputed in that proceeding (see IPR2017-01621, Paper 43, 23-24) but
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`never decided, because the case was voluntarily terminated before motions to
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`exclude were filed or a FWD issued. More troubling, the premise of PO’s argument
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`1
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`
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`IPR2021-00406
`Patent 10,716,793 B2
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`is that Petitioner and/or Dr. Hall-Ellis should have responded to EX2092 before PO
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`Petitioner’s Reply ISO
`Motion to Exclude
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`ever submitted EX2092 during a deposition or in this proceeding.
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`Finally, PO’s attempt to frame EX2092 as only providing context to Dr. Hall-
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`Ellis’ second deposition (Paper 69, 7-9) is misleading because PO relied on EX2092
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`directly in its Sur-Reply to support its public availability arguments. See Paper 55,
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`8-9 (citing EX2092 as EX2094, 63-65). The Board in Ascend, which PO relies on,
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`cautioned against such usage, which gives “parties the incentive to raise completely
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`new evidence during a deposition, and then introduce that evidence into the record
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`with a sur-reply, depriving the opposing party the opportunity to fully address that
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`evidence.” IPR2020-00349, Paper 53, at 12 (P.T.A.B. July 15, 2021). The Board
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`has rejected such attempts to enter exhibits under the guise of “provid[ing] context.”
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`Netflix, Inc. v. DivX, LLC, IPR2020-00558, Paper 50 at 35 (P.T.A.B. Aug. 23, 2021)
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`(excluding deposition exhibit filed with Sur-Reply, where the witness “had not
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`prepared for the deposition using the document,” and Petitioner did “not have an
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`opportunity to respond to [the] new evidence”). If PO truly intended to contest the
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`British Library’s practices with EX2092, it should have used the exhibit with Ms.
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`Rampersad, the British Library declarant of EX1116 and EX1119. Petitioner made
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`Ms. Rampersad available for deposition, but PO cancelled her deposition the night
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`before, after improperly shoehorning EX2092 in Dr. Hall-Ellis’s deposition.
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`2
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`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Petitioner’s Reply ISO
`Motion to Exclude
`
`None of PO’s arguments address the real issue with EX2092: whether the
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`alleged practices described in 2018 were in effect as of 2006 or if they refute
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`Ms. Rampersad’s or Dr. Hall-Ellis’s statements about the public availability of the
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`Voswinckel JAHA and JESC abstracts. EX2092 confirms that the “main reading
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`rooms in London” have a “range of searching and browsing facilities” (EX2094, 64-
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`65) and then does not speak to the particular abstracts at all. PO only asked Dr. Hall-
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`Ellis during her deposition whether she had any reason to doubt the veracity of
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`EX2092, to which she responded that the document is “incomplete” and does not
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`“necessarily speak to the same issue.” EX2094, 23:4-24. EX2092 was not used to
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`“test” Dr. Hall-Ellis’ testimony. For these reasons, EX2092 should be excluded.
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`II. EX2100 and EX2101: Schill Instructions for Use
`
`PO does not contend that EX2100 and EX2101 have information about their
`
`origins or date of public availability. Instead, PO first argues that dating is a
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`“substantive,” not “evidentiary issue.” Paper 69, 10. But this argument against
`
`exclusion runs straight into the issue in Papers 60 and 62: PO submitted the exhibits
`
`with its Sur-Reply, when Petitioner had no papers left for “substantive” challenges—
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`exactly why PO was prohibited from filing any “new evidence other than deposition
`
`transcripts.” Trial Practice Guide, 73; Paper 50. PO instead tries to shoehorn these
`
`exhibits into the record under the guise of “testing witness’ testimony” (Paper 69,
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`11-12)—the “gamesmanship” the Board cautioned against (EX2104, 24:16-29:23).
`
`3
`
`
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`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Petitioner’s Reply ISO
`Motion to Exclude
`
`These exhibits, in deposition, had no date or Internet Archive declaration, nor
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`did PO elicit testimony re date or authenticity. See EX2099, 164:1-177:17. PO
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`entered the exhibits over Petitioner’s objections (id. (raising Paper 50). Dr. Gonda
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`thus testified based on the unauthenticated documents alone. EX2099, 164:1-
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`177:17. PO then cited directly to the exhibits, rather than as “testing” Dr. Gonda’s
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`testimony. Paper 55 at 14, 16. Thus, “testing” Dr. Gonda’s opinions is not the basis
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`for including these exhibits, nor were they authenticated even in that context.
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`PO now tries to establish authenticity with an Internet Archive Declaration
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`(EX2106), arguing that “Petitioner has both [the documents in the declaration and
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`EX2100 and EX2101], which can easily be compared, and failed to identify any
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`differences between them.” Paper 69, 11 n.3. The same applies to EX1087 and
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`EX1115.1 Accordingly, if the Board finds EX2106 sufficiently authenticates
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`EX2100 and EX2101 under FRE 901, Petitioner asks the Board to find the same for
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`EX1087 and EX1115, and the documents they authenticate (EX1037 and EX1114).
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`III. EX2102: DeVilbiss, UltraNeb, Ultrasonic Nebulizer User Manual
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`There is no evidence as to the authenticity or date of EX2102 under FRE 901.
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`PO argues that the exhibit “tested the basis for [Dr. Gonda’s] assumptions about
`
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`1 EX1037’s German version is the same as the document dated in EX1087; EX1114
`is the same document dated in EX1115. PO has failed to identify any differences.
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`4
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`IPR2021-00406
`Patent 10,716,793 B2
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`average values” (Paper 69, 13), but failed to date or authenticate the document with
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`Petitioner’s Reply ISO
`Motion to Exclude
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`Dr. Gonda, or in its Sur-Reply. PO fails to point to any evidence that this document
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`was available before May 15, 2006 and thus “evidence of the general knowledge in
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`the art at around the time of the invention.” Id. (quoting Paper 18, 24); Nevro Corp.,
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`IPR2017-01812, Paper 79 at 84 (“undated” exhibit and “cited testimony concerning”
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`the exhibit “does not speak to a POSITA’s understanding of the components of such
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`a device, at the critical date”).2 Thus, EX2102 should be excluded.
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`IV. EX2103: Lieberman article
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`PO failed to serve any supplemental evidence, and now asserts as attorney
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`argument that there is a Google search pathway to find EX2103 today. But PO
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`cannot prove that the article was published before May 15, 2006, and offers no
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`reason for allowing the exhibit if it was unknown to a POSA before then. PO’s
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`argument that dating is a “substantive” not “evidentiary” issue should be rejected for
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`the reasons explained above for EX2092. Regardless, “undated” EX2103 and all
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`“cited [Gonda] testimony concerning” EX2103 is not sufficiently authenticated to
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`“speak to a POSITA’s understanding . . . at the critical date,” nor is there any non-
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`attorney-argument, record evidence that the exhibit is what it purports to be. See
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`Nevro Corp., IPR2017-01812, Paper 79 at 84. Thus, EX2103 should be excluded.
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`2 PO filed, but did not cite to, EX2107 as curing evidence. See Paper 69; Paper 70.
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`5
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`
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`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Dated: May 4, 2022
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
`
`Petitioner’s Reply ISO
`Motion to Exclude
`
`
`
`By:
`
`
`
`
`
`/Erik B. Milch/
`Erik B. Milch
`Reg. No. 42,887
`Counsel for Petitioner
`
`6
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`
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`IPR2021-00406
`Patent 10,716,793 B2
`
`
`Petitioner’s Reply ISO
`Motion to Exclude
`
`CERTIFICATE OF SERVICE
`foregoing
`the
`The undersigned hereby certifies
`that a copy of
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`EXHIBITS 2092, 2100, 2101, 2102, AND 2103 was served on counsel of record on
`May 4, 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: May 4, 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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