`571-272-7822
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` Paper No. 91
`
`
` Entered: January 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STEADYMED LTD.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00006
`Patent 8,497,393 B2
`____________
`
`
`
`Before LORA M. GREEN, JONI Y. CHANG, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`
`On January 3, 2018, a conference call was conducted among counsel
`for Petitioner, Steady Med LTD (“Steady Med”), counsel for Patent Owner,
`United Therapeutics Corporation (“UTC”), and Judges Harlow, Chang, and
`Green. A court reporter was also present.1 The purpose of the call was to
`address Steady MEd’s request for authorization to file a motion requesting
`action by the Board concerning U.S. Patent Application Nos. 15/423,011,
`15/423,021, and 15/455,300 (“the continuation applications”), which are
`continuations of the application that issued as U.S. Patent No. 8,497,393 B2
`(“the ’393 patent”).
`We entered a Final Written Decision under 35 U.S.C. § 318(a),
`holding claims 1–22 of the ’393 patent unpatentable, on March 31, 2017.
`Paper 82. The United States Court of Appeals for the Federal Circuit
`entered Judgment affirming the Final Written Decision on November 14,
`2017. Ex. 3001. The Board’s Final Written Decision, the Federal Circuit’s
`Judgment, and the estoppel provision of 37 C.F.R. § 42.73(d)(3)(i) are each
`of record in the file history for each of the continuation applications. See,
`e.g., U.S. Patent Application No. 15/423,011, Third Party Submission, filed
`July 21, 2017; id. at Miscellaneous Incoming Letter, filed November 16,
`2017. Accordingly, because the Examiner has been made aware of our Final
`Written Decision and the Federal Circuit Decision regarding the
`unpatentability of claims 1–22 of the ’393 patent, as well as the prohibition
`
`
`1 A transcript of the call has been filed as Exhibit 2063 to this proceeding.
`The transcript details the full discussion, which will not be repeated in this
`Order.
`
`2
`
`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`against UTC taking action inconsistent with the judgement of unpatentability
`as to those claims (37 C.F.R. § 42.73(d)(3)(i)), it is not necessary for us to
`take further action under 37 C.F.R. § 42.73 regarding the continuation
`applications.
`Therefore, Steady MEd’s request for authorization to file a motion
`requesting action by the Board concerning the continuation applications is
`denied.
`It is
`ORDERED that Steady MEd’s request for authorization to file a
`motion requesting action by the Board concerning U.S. Patent Applications
`Nos. 15/423,011, 15/423,021, and 15/455,300 is denied.
`
`
`
`3
`
`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`PETITIONER:
`
`Stuart E. Pollack
`Lisa A. Haile
`DLA Piper LLP
`stuart.pollack@dlapiper.com
`lisa.haile@dlapiper.com
`steadymed-ipr@dlapiper.com
`
`PATENT OWNER:
`
`Stephen B. Maebius
`George Quillin
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`Richard Torczon
`Robert Delafield
`Katherine Hasper
`WILSON, SONSINI, GOODRICH & ROSATI
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`bdelafield@wsgr.com
`khasper@wsgr.com
`
`
`4
`
`
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