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`Paper 44
`Date: October 1, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`LIQUIDIA TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`
`__________
`
`IPR2020-00770
`Patent 9,604,901 B2
`
`__________
`Record of Oral Hearing
`Held: June 23, 2021
`__________
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`
`Trials@uspto.gov
`571-272-7822
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`
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`IPR2020-00770
`Patent 9,604,901 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`DEEPA KANNAPPAN, ESQ.
`SANYA SUKDUANG, ESQ.
`ERIK B. MILCH, ESQ.
`Cooley LLP
`1299 Pennsylvania Avenue, NW
`Suite 700
`Washington, D.C. 20004
`212-479-6840
`dkannappan@cooley.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`DOUG CARSTEN, ESQ.
`McDermott, Will & Emery
`18565 Jamboree Road
`Suite 257
`Irvine, California 92612
`858-366-3909
`dcarsten@mwe.com
`
`STEPHEN B. MAEBIUS, ESQ.
`Foley & Lardner, LLP
`3000 K Street, NW
`Suite 600
`Washington, D.C. 20007-5109
`202-672-5569
`smaebius@foley.com
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`June 23, 2021, commencing at 1:00 p.m. EDT, via Videoconference.
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`IPR2020-00770
`Patent 9,604,901 B2
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`P-R-O-C-E-E-D-I-N-G-S
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`1:00 p.m.
`JUDGE YANG: Good afternoon. This is the hearing for
`IPR2020-00770. The challenged patent is 9,604,901. I'm Judge Yang,
`Judges Franklin and Schneider are also on the panel. Now, counsel, please
`introduce yourselves. Let's start with Petitioner.
`MS. KANNAPPAN: Good afternoon, Your Honor. This is Deepa
`Kannappan, on behalf of Petitioner, Liquidia Technologies. With me are my
`colleagues, Mr. Eric Milch and Mr. Sanya Sukduang, also on behalf of
`Petitioner. All three of us are from Cooley, LLP.
`JUDGE YANG: Thank you. Welcome. And Patent Owner.
`MR. MAEBIUS: Hi. Good afternoon, Your Honors. This is Steve
`Maebius, from Foley & Lardner. And also with me as co-counsel, Doug
`Carsten, from McDermott, Will & Emery.
`JUDGE YANG: All right, thank you. And welcome to you, too.
`Before we start the oral argument, we will quickly go through a few
`housekeeping items.
`For today's hearing, each party has 60 minutes to present your
`argument, starting with Petitioner, followed by Patent Owner. And both
`parties may, if you desire, reserve time for rebuttal.
`During oral argument, please -- this is important -- please identify
`the record clearly. And this is not only to make sure that the transcript is
`clear, but also because we are having the hearing remotely today. The
`Judges cannot see what you put out there, but we have the record, including
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`the demonstratives. So, if you identify the record clearly, we will be able to
`follow you.
`You just need to be specific. I mentioned the demonstratives. I want
`to reiterate what we said in the Hearing Order. That is, demonstratives are
`not evidence.
`Last we heard it, the parties appeared to, I want to say disagree,
`on -- at least you all sought some guidance on Exhibit 1053, which is the
`transcript of the Markman hearing at the District Court.
`As we explained it in the email this morning -- and you all should
`have received that email this morning -- Exhibit 1053 at this time has not
`been admitted into the evidence in this proceeding.
`We asked the Petitioner to file it together with its Motion to File
`Supplemental Information, because we were short on time when we received
`that request, which was about ten days ago.
`We just thought it is more efficient to have it filed. The Panel still
`has to consider the motion itself, as well as the opposition from Patent
`Owner, to decide whether there is good cause to admit the exhibit.
`If we ultimately decide not to admit it, Exhibit 1053 will be
`expunged. So, about whether you can rely on that exhibit for substantive
`discussion today, you are not prohibited from doing so.
`But perhaps two pieces of advice. First, you should not make any
`new argument. And second, if Exhibit 1053 is ultimately expunged, then we
`will not consider any discussion about that exhibit. So, just use your time
`wisely.
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`Another thing is, if you have any objection today during the hearing,
`please help us keep the order of the argument. Please don't interrupt the
`other side. You can raise any objection after the other side finishes their
`presentation.
`Another important point is to please mute yourselves and only
`unmute yourself when you are talking. And you should have some contact
`numbers for the Board.
`So, if you encounter any technical difficulties, please contact the
`Board immediately.
`Lastly, before we finish the oral argument -- well, actually, it's after
`we finish the oral argument, the Panel will disconnect, but counsel, please
`stay on the line, in case the court reporter needs help with spellings, or
`clarification, that sort of thing. Any questions?
`MS. KANNAPPAN: Yes, Your Honor, just one. We put in a LEAP
`request about a week ago for myself and I was wondering if the Board had a
`chance to consider it.
`JUDGE YANG: I have to apologize. I did not see it. Do you by
`any chance know which date you submitted that?
`MS. KANNAPPAN: Yes. It was a week ago, June 16th.
`JUDGE YANG: There is no filing that I can see on the 16th.
`MS. KANNAPPAN: I believe the LEAP request was submitted via
`email. That's what the guidance we received. And so, we had emailed it to
`that particular email address.
`JUDGE YANG: All right. We will sort it out later. But at this time,
`based on your representation, if you qualify for the LEAP program, yes, we
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`will grant the request. Let me just write myself a note, so that we will find
`out.
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`All right, because of the LEAP request, we will grant Petitioner
`75 minutes for the argument. Actually, before we go into the argument, I
`have one more question for both sides.
`I see both parties filed updated demonstratives today. I honestly
`haven't done the comparison of today's version from the earlier version. Can
`I just ask you what the changes are?
`Petitioner first, please.
`MS. KANNAPPAN: Yes, Your Honor. The Petitioner's
`demonstratives, Slide 11, there is deleted reference to the Motion to Strike.
`JUDGE YANG: Okay. And Patent Owner, please?
`MR. CARSTEN: Yes, Your Honor. I believe there's been very
`minor changes. I believe there's a change to Slide 57.
`JUDGE YANG: Okay.
`MR. CARSTEN: And changes to Slides 89, 117 and 118. But the
`numbering hasn't changed in any regard.
`JUDGE YANG: Okay, very good.
`MR. CARSTEN: If you're looking at the old version, we can use
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`them.
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`JUDGE YANG: Okay, very good. All right, with that, Petitioner,
`would you like to reserve any time for rebuttal?
`MS. KANNAPPAN: Yes, Your Honor. We'd like to reserve
`25 minutes for rebuttal.
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`Patent 9,604,901 B2
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`JUDGE YANG: Okay, 25 minutes. That will give you 50 minutes
`now. And let me try to set my timer. I will try to give you a five-minute
`warning. But please, if you can, keep a timer on your side, so that we keep
`everything straight.
`All right, I am all set. You may start whenever you are ready.
`MS. KANNAPPAN: Thank you, Your Honors, and good afternoon.
`I plan to address the definition of a skilled artisan and claim construction
`issues, and then hand off to my colleague, Mr. Milch, to discuss issues
`specific to the combination of Moriarty and Phares.
`Mr. Milch will then hand it back to me to discuss issues based on
`Phares alone, including Ground 1, and Claims 6 and 7 for both grounds.
`And because, Your Honor, I'm here as a LEAP petitioner, with me is
`my supervising attorney, Sanya Sukduang, who I might refer to if I'm not
`able to answer any of the questions that the Board has for me today.
`Unless the Board would like us to address the issues in any other
`order, I'll jump right into POSA view.
`Looking at Slide 6 of Petitioner's demonstrative, we've laid out both
`parties' proposed definitions of a POSA. The bottom line here is that it
`doesn't matter for the two experts that are present have submitted expert
`declarations in this proceeding.
`The main difference between these two proposed definitions is that
`UTC, or Patent Owner, would want the POSA to be an industrial chemist
`with experience in pharmaceutical manufacturing.
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`Patent 9,604,901 B2
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`If you scroll to Slide number 9 in Patent Owner's demonstrative, or
`in Petitioner's demonstrative, Petitioner's expert, Dr. Winkler, qualifies as a
`POSA under either definition.
`And specifically, under Patent Owner's proposed definition,
`Dr. Winkler has submitted evidence that he has extensive experience
`consulting for processed chemistry groups and pharmaceutical companies,
`including Bristol Myers Squibb, that the lab regularly produces greater than
`2.9 gram quantities of anti-cancer compounds, and 2.9 gram quantities of
`what is claimed in the '901 patent.
`And that is what UTC is claiming as pharmaceutical manufacturing,
`or pharmaceutical batch.
`And he's the cofounder of a company that has developed and scaled
`a BPI drug production. So, Dr. Winkler does qualify as a POSA under either
`party's proposed definition.
`Further, the Board, in its institution decision, made it clear that the
`level of skill-in-the-art is reflected by the prior art, and this very prior art
`was used in a prior IPR proceeding on the '901 patent’s parent patent, the
`'393 patent, and Dr. Winkler was qualified as a POSA, to apply it on the
`same prior art with that proceeding.
`And in fact, the Board relied on his testimony in its final Written
`Decision. So, under either party's definition, Dr. Winker qualifies as a
`POSA.
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`Regardless, there are reasons why you choose these proposed
`definitions. It doesn't make sense for what the '901 patent claims actually
`cover.
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`Turning to Slide 7 of Petitioner's demonstrative, the '901 patent,
`Claim 1, is reproduced there. There are no commercial, industrial, large-
`scale, recitations in the claim.
`There are no multi-gram quantities claims. The claim only requires
`at least 2.9 grams of treprostinil, or salt.
`And UTC's expert agrees that these terms, really at the commercial
`or industrial scale synthesis, are not in the claim. And he even testified that
`the claims cover non-commercialized products, such as those used in clinical
`trials.
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`So, based on the claim language, all that's required here is basic
`organic chemistry, such as alkylation, hydrolysis, and salt formation. There
`isn't justification in the claims to import this higher level of skill in the art
`that UTC proposes.
`Further, turning to Slide 8 of Petitioner's demonstrative, the prior art
`former process just disclosed in Moriarty, is commercial-scale, and it's
`disclosed at 441 grams production of treprostinil-free acid. And there isn't
`really dispute that Moriarty is commercial scale. UTC and its experts have
`already admitted the fact in this proceeding, and in the previous
`'393 proceeding.
`And Example 6 in the '901 patent actually lines up with Moriarty,
`and that has also been admitted by Petitioner in the previous proceeding, and
`by its expert in this proceeding.
`And the '901 patent discloses, for Example 6, about 535 grams
`treprostinil. So, again, the prior art is commercial-scale, however UTC
`defines that. That's all I have on skilled artisan.
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`Moving to the claim construction issues, the claim construction
`issues here are mostly a mess of UTC or Patent Owner's making, because of
`their withdrawals that they asserted in their very last paper. They're
`certified.
`Turning to Slide 11, we put the five terms that are at issue -- a salt
`treprostinil, and pharmaceutical products -- are not disputed, so won't be
`spending time on that.
`But the other three -- pharmaceutical batch, contacting the solution
`comprising treprostinil from step (b) with a base to form a salt of
`treprostinil, and storing and storage -- are disputed. And I'll just walk
`through each of them.
`First, for pharmaceutical batch. On Slide 13 of Petitioner's
`demonstratives, we laid out the proposed definition of pharmaceutical batch
`from both parties.
`Now, Liquidia has always put forth the plain and ordinary meaning.
`And it clarified what that plain and ordinary meaning was in its reply, which
`is the pharmaceutical batch made according to the process recited in steps
`(a) through (d), and optionally, (e) -- that's just the claim language -- and
`then, wherein no purification steps appear between alkylation and salt
`formation.
`UTC's proposed definition is a little more confusing. It adds a lot of
`terms that aren't actually in the patent claims or the certification. Instead, it's
`imported from FDA regulations.
`UTC states that a pharmaceutical batch needs to be a specific
`quantity of treprostinil, or its salt, that's intended to have uniform character
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`and quality -- don't know exactly what that means -- within specified limits,
`and is produced according to a single manufacturing order -- again, not sure
`what single manufacturing order means -- during the same cycle of
`manufacture -- again, what the same cycle of manufacture -- wherein the
`uniform character and quality is such that it still contains impurities resulting
`from the method by which it was produced.
`And in Patent Owner's response, it's certified they added additional
`requirement under pharmaceutical batch that requires storage stability,
`which the Board specifically rejected in its denial of Patent Owner's
`rehearing request on institution.
`JUDGE YANG: So, counsel, question for you. Does the word
`pharmaceutical have any effect here? Does it mean anything, even in
`Liquidia's proposed construction?
`MS. KANNAPPAN: Yes, Your Honor. I think it's for
`pharmaceutical use. It means to eventually turn into something that's given
`to a patient. I think that's what pharmaceutical would mean.
`And under either construction, actually, the prior art discloses
`pharmaceutical batch. But this debate may not actually be relevant in the
`Board's ultimate decision.
`First, Moriarty clearly discloses the pharmaceutical batch of
`441 grams. UTC's expert actually confirmed this, saying that Moriarty is
`almost identical to the former process of Example 6, which I had discussed
`just a few minutes ago, and that the term batch is literally used to describe
`the former process in the '901 patent itself.
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`And he confirmed that the batch term, as used for Example 6, would
`mean a pharmaceutical batch to a POSA.
`Further, Phares also discloses a pharmaceutical batch because the
`salt that it discloses is actually used in clinical trials. And so it has what
`Your Honor was asking earlier, that it was actually intended for use in a
`patient, and was actually used in patients.
`Turning to Slide 14 of Patent Owner's demonstrative, as what I was
`discussing just a few minutes ago, that UTC's construction basically imports
`FDA regulations that have no support in the intrinsic record, and create more
`ambiguity than clarity, because they introduce all those extra terms that
`neither expert has defined.
`Further, the additional implication of storage limitation, one, has
`already been rejected by the Board, but also renders the separate storing in
`storage terms in Claims 6 and 7 superfluous, under claim differentiation
`canon, that should not be allowed.
`And finally, the District Court actually rejected importation of the
`limitations. And that cite is on Petitioner's Demonstrative Slide 14. This is
`referring to the Markman hearing transcript. The District Court --
`JUDGE YANG: So, counsel, how much weight should we give to
`what the District Court judge said during the Markman hearing?
`MS. KANNAPPAN: Your Honor, the District Court's reasoning is
`entirely in the Markman hearing transcript. And so Petitioner submits that
`the Board should give persuasive authority to the District Court's back-and-
`forth in the Markman hearing transcript, because the order itself is just the
`conclusion of what the District Court actually construed the terms for.
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`But how it dealt with the parties' competing construction, that
`discussion is in the hearing transcript. And so, we think that would actually
`be more useful to the Board, to see how the District Court handled the same
`patent, same claims, same intrinsic record, and how it reasoned its way to its
`conclusion.
`Turning to Slide 15 of Petitioner’s demonstrative, this is to support
`the plain and ordinary meaning that Liquidia actually puts forward. There
`are no steps between alkylation and salt formation that are disclosed in the
`'901 patent.
`And the process steps, moving to Slide 16, the specification is clear
`that these purification steps are eliminated. And that's what makes it
`different from the former process.
`Specifically, the '901 patent states, Column 16, Line 66, to
`Column 17, Line 1, that the purification of benzindene nitrile by column
`chromatography is eliminated. And UTC's expert, Dr. Pinal, confirmed it.
`And that is why, in a clarifying definition of plain-and-ordinary-
`meaning, Petitioner includes that the purification test needs to be eliminated
`between the two.
`JUDGE YANG: So, counsel, we understand you construe the claim
`term in view of the specification. But is that construction limited by either
`an embodiment or a preferred embodiment, or a statement in the
`specification? There is a fine line.
`Can you just elaborate a little bit why a sentence saying the
`purification step is eliminated should be -- that language should be in the
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`construction. I don't want to use the word import, but you know what I
`mean.
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`MS. KANNAPPAN: Yes, Your Honor. And of course Your
`Honor's right that a preferred embodiment doesn't necessarily have to limit
`the claims themselves.
`But in this case, the specification is very clear that the difference
`between the former process, that everyone agrees is prior art, and the claim,
`is elimination of purification and alkylation steps.
`And it's also clear because the patent touts efficiency and scalability
`because of elimination of these steps. And it was presented basically for
`patentability.
`And that's why it's relevant. And the details are in the papers for
`their cites to both the patent specification and the prosecution history, where
`UTC has made these arguments.
`So, this is why the claims are patentable. And that's why it should be
`read into the claim construction.
`And in fact, up until its surreply, UTC agreed with Liquidia on this.
`And this is at Slide 17 of Petitioner’s demonstrative. You can see it
`distinguished Moriarty, based on the exclusion of the purification step.
`And it did it both in the '393 IPR and in this IPR. You can see all it
`argues for a different POSA definition, based on caution, in eliminating the
`purification step for Moriarty, is that a POSA wouldn't want to eliminate that
`step. It would very cautious to do that, because of the POSA's knowledge in
`pharmaceutical manufacturing.
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`And so, UTC has repeatedly argued that that elimination of
`purification is crucial to the claim. And it only changed its mind in its
`surreply. It's a little bit not in this record for why, but there are different
`issues in the District Court, not related to validity, that UTC needed to get
`around, and the timing of claim construction at the District Court and UTC's
`surreply probably drove that.
`Moving on to the next term, which is contacting the solution
`comprising treprostinil from step (b), with the base to form a salt of
`treprostinil, and that's Slide 19 of Petitioner's demonstrative.
`So, this construction -- and it's actually only at issue because of
`UTC's withdrawal and the surreply -- the construction that Liquidia had
`operated under the plain-and-ordinary-meaning, and that the Board
`understood to be the plain and ordinary meaning, is that isolation is excluded
`between steps (b) and (c), but that you had to take the solution from step (b)
`to form the salt of treprostinil. That's just the plain language of the claim.
`But in its POR, UTC was very clear that this is excluded. And that
`excerpt is provided at Slide 19. UTC had a whole section on just this term,
`and it specifically said that the language means treprostinil is not isolated
`from the solution formed in step (b), before forming a salt in step (c).
`But in its surreply, it was through that statement. And again, this is
`related to other things happening in the District Court, but it made it
`untenable for it to keep going forward with the same argument.
`But for consistency, Petitioner would submit that this is the actual
`right construction. It's the one that the parties have continued to apply over
`and over and over again in previous IPRs, in this IPR, except for the single
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`withdrawal that was done on one piece and in a footnote of UTC's surreply
`in this proceeding.
`So, for consistency, we ask that the Board either finds that exclusion
`of isolation between these steps is necessary, and reject UTC's withdrawal in
`its surreply, or in its pending Motion to Strike, Petitioner has identified
`portions of the Patent Owner response, surreply, and UTC's two expert
`declarations that still rely on this exclusion of isolation argument, and we
`ask that the Board strike those arguments, or at least disregard them, because
`of UTC's withdrawal.
`And those arguments are provided in yellow highlighting on
`Exhibits 1043 to 1046.
`At Slide 20 of Petitioner's demonstratives, we explain why UTC has
`simply withdrawn what it's saying is its construction, but not withdrawn its
`argument based on that construction. And there's a couple of examples in
`there. One from secondary considerations of non-obviousness, and then
`another trying to distinguish the claims over Moriarty and Phares.
`And finally, for the terms storing and storage, which appear in
`Claim 6, and then Claim 7 that depends from Claim 6, at Slide 22 of
`Petitioner's demonstrative, we provide both construction, Liquidia again is
`only putting forth the plain and ordinary meaning, which, in fact, the District
`Court adopted.
`And the District Court specifically rejected UTC's construction,
`which imports stability requirements into the storing and storage terms.
`Liquidia also clarifies what the plain-and-ordinary-meaning is, such
`as we're pulling from a standard chemical dictionary if it was available when
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`the '901 patent was filed, and that's any method of keeping raw materials,
`chemical food products and energy, while awaiting these transportation or
`consumption, or simply a method of keeping chemicals while awaiting use.
`You can see, on the other hand, import stability limitation. And this
`is clear on Slide 24 of Petitioner's demonstrative. There, we provide the
`excerpt from the patent, which is at Column 5, lines 4 through 10, that define
`the term stable.
`And it's that definition that UTC is using as a definition of storage.
`But the term stable is recited separately from the term storing, in Claim 8 of
`related patent ending in '066, which is provided as Exhibit 2027 in this
`proceeding.
`And this matters because the exact same specification and written
`description is used in both patents. But in Claim 8 of the '066 patent, the
`terms stable and storing are used separately. And under claim differentiation
`canon, that means that they have to have separate meanings that don't
`overlap with each other.
`And this is provided with Federal Circuit precedent under Omega
`Engineering. UTC tries to argue that it has to be the '901 patent claims that
`do that in order for claim differentiation canon to apply, but that's not true.
`JUDGE SCHNEIDER: Counsel, this is Judge Schneider. I just want
`to make it clear now, the claim that you're showing here on Slide 24 is from
`a different patent, however. Correct?
`MS. KANNAPPAN: Yes, Your Honor.
`JUDGE SCHNEIDER: So, but you're trying to argue the claim
`differentiation applies even with the different patent?
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`MS. KANNAPPAN: Yes, Your Honor.
`JUDGE SCHNEIDER: Okay.
`MS. KANNAPPAN: Under Omega Engineering --
`JUDGE SCHNEIDER: Okay. All right, thank you.
`MS. KANNAPPAN: So, under Omega Engineering, the
`presumption that the same claim term the same patent or related patent
`carries the same construed meaning. That was the holding in that Federal
`Circuit case. And the related patent matters most when the specification is
`identical, which is what it is here. And so, it's a clear statement from the
`Patent Owner how it understands the terms stable and storing, because in
`another patent, based on the state specification, it made it clear that those
`terms are different.
`Does that makes sense, Your Honor?
`JUDGE SCHNEIDER: Now, is the patent from which Claim 8 is
`copied, other than I understand the different specification, but is there a
`claim of priority where relatedness between those two patents and the
`current one?
`MS. KANNAPPAN: I believe there is, Your Honor.
`JUDGE SCHNEIDER: Is it CIP? Is it divisional? Is it a
`continuation?
`MS. KANNAPPAN: I believe they have the same parent, but I can
`confirm that while Patent Owner is arguing. They are continuational. Yes.
`JUDGE SCHNEIDER: Thank you. All right.
`MS. KANNAPPAN: I believe the specific link is detailed in our
`papers as well.
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`And then, finally, on Slide 25 of Petitioner's demonstrative, we
`raised the motion to strike issue, which is that the District Court specifically,
`somewhat confusingly, said that actual storage isn't required to meet this
`limitation. And then, separately, UTC's counsel at the Markman hearing
`stated that one day of storage is enough.
`Which lines up with both the parties' construction, because there's no
`actual time or duration that's built into the construction of either party. And
`so, we ask that the Board apply that particular construction, that as little as
`one day of storage meets the limitations of Claims 6 and 7.
`And then, for consistency, we've identified all portions of UTC's
`papers that require actual storage data, and have highlighted that in orange as
`part of our motion to strike exhibit -- again, Exhibits 1043 to 1046 -- and
`we'll explain a little bit later, when we get into those two claims, why actual
`storage data isn't required under these constructions.
`At this point, I'll turn it over to my colleague, Mr. Milch, who will
`discuss issues related to Ground 2, which is a combination of Moriarty and
`Phares.
`JUDGE YANG: Very good. Just one point. Not a question to you,
`counsel. Just you and your colleagues should be prepared to discuss
`Exhibits 1002. It is part of the motion to exclude. And there is also the
`perjury statements, or lack thereof. So, the Panel would like to discuss that.
`As far as I remember, none of you were planning to address that.
`If I misunderstood, sorry, just go ahead and do whatever you
`planned. But if you didn't plan to do it, please, one of you should address
`that. Anybody can. We're not picky.
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`MS. KANNAPPAN: I can go ahead and address that shortly.
`JUDGE YANG: Okay. Yes, whenever you want to. You want to
`do it now?
`MS. KANNAPPAN: Sure. Yes, I think I can deal with that in a few
`moments.
`JUDGE YANG: Okay.
`MS. KANNAPPAN: So, what happened there is that it was an
`inadvertent omission from Dr. Winkler's original declaration, Exhibit 1002.
`There were drafts that were going back and forth and at some point that
`paragraph got deleted, and we didn't realize that it got deleted.
`And as soon as we did, in the next paper we had, which I believe was
`our reply, Dr. Winkler refiled that exact same declaration with the perjury
`statement at the end. And in between, UTC did a full several-hour
`deposition of Dr. Winkler, based on his statement in that declaration.
`And so, we submit, Your Honor, that there has been no prejudice
`here, and that the error has been corrected. And we apologize for the
`inadvertent omission in the original declaration.
`(Simultaneous speaking.)
`JUDGE FRANKLIN: This is Judge Franklin. So, your position is
`that Petitioner itself discovered the error?
`MS. KANNAPPAN: No, Your Honor. It was -- well, yes. It was
`sort of not referenced in Dr. Winkler's deposition. But it was very
`conspicuously not referenced. And then, we realized later, when we were
`putting together his second declaration, that that statement wasn't there.
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`MR. SUKDUANG: Your Honor, this is Sanya Sukduang, counsel
`for Petitioner. On that particular question, it was not noticed prior to the
`deposition.
`When Mr. Carsten raised the issue, and then Patent Owner
`specifically raised the issue in their later document, and that's when that was
`identified.
`Petitioner's next paper, we submitted a revised declaration, which
`itself was not objected to by UTC. So, there are two declarations submitted,
`Dr. Winkler's first declaration, it was resubmitted in his supplemental, or
`second, declaration, both of which contain the perjury statement, and neither
`of which those have been objected to by UTC.
`JUDGE SCHNEIDER: Counsel, this is Judge Schneider. Our
`understanding from the papers, is that within the ten days required under the
`rules, objections were made, and including objection to Exhibit 1002, which
`specifically raised both hearsay and authentication issues.
`Now, why wasn't that sufficient to put you on notice, ten days after
`you filed, that there was a problem with that declaration?
`MS. KANNAPPAN: Your Honor, this is Deepa Kannappan again.
`The objections weren't specific to the perjury statement. We thought they
`were talking about the content of the exhibit, and we didn't think --
`JUDGE SCHNEIDER: Well, one was specifically authentication.
`There was a 901/902 objection that was made. Not merely hearsay. And
`that deals with authentication. So, why wasn't that sufficient to put you on
`notice that there was something wrong with the authentication of that
`declaration?
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`MS. KANNAPPAN:
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