Trials@uspto.gov
`571-272-7822
`
`Paper 49
`Date: June 14, 2022
`
`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
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`PER CURIAM
`
`Denying Patent Owner’s Request for Rehearing of
`Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 49
`Date: June 14, 2022
`
`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
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, ZHENYU YANG, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`
`PER CURIAM
`
`Denying Patent Owner’s Request for Rehearing of
`Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2020-00770
`Patent 9,604,901 B2
`
`
`INTRODUCTION
`Liquidia Technologies, Inc. (“Petitioner”) filed a Petition (Paper 1),
`seeking inter partes review of claims 1–9 of U.S. Patent No. 9,604,901 B2.
`We instituted trial to review the challenged claims. Paper 7. Thereafter,
`United Therapeutics Corporation (“Patent Owner”) filed a Response to the
`Petition (Paper 12), Petitioner filed a Reply (Paper 15), and Patent Owner
`filed a Sur-reply (Paper 25).
`At the conclusion of the trial, we issued a Final Written Decision,
`determining that Petitioner has shown the unpatentability of claims 1–5, 8,
`and 9, but not claims 6 and 7. Paper 45 (“Decision” or “Dec.”). Patent
`Owner timely filed a Request for Rehearing of the Decision as to
`claims 1–5, 8, and 9. Paper 46 (“Reh’g Req.”). Patent Owner also timely
`filed a request for Precedential Opinion Panel (POP) review. Paper 47;
`Ex. 3002. The POP panel denied that request and instructed this panel to
`consider Patent Owner’s rehearing request. Paper 48, 2.
`For the reasons explained below, we deny Patent Owner’s Request for
`Rehearing.
`
`STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id.
`ANALYSIS
`Patent Owner argues that our Decision “relied on inadmissible,
`unsworn expert statements submitted by Petitioner that, when timely
`
`2
`
`
`
`IPR2020-00770
`Patent 9,604,901 B2
`
`objected to by Patent Owner, Petitioner failed to timely cure as required by
`[3]7 C.F.R. § 42.64(b)(2).” Reh’g Req. 2. The unsworn expert statements
`Patent Owner refers to are from Exhibit 1002, the purported Winkler
`Declaration. Id. at 4.
`During trial, the parties briefed, among other issues, whether we
`should exclude Exhibit 1002. Papers 31, 32, 37. In our Decision, we denied
`Patent Owner’s Motion to Exclude Exhibit 1002. See Dec. 54–58. And in
`determining that claims 1–5, 8, and 9 are unpatentable, we relied on certain
`statements from Exhibit 1002. Id. at 32–34, 36, 37, 41, 42 (citing Ex. 1002
`¶¶ 47, 49, 148, 151, 152, 159, 174, 176–178).
`In its Request for Rehearing, Patent Owner contends that we “erred by
`considering and relying extensively on the inadmissible original Winkler
`Declaration.” Reh’g Req. 6. Patent Owner, however, does not identify any
`matter that we allegedly misapprehended or overlooked. Indeed, in our
`Decision, we dedicated numerous pages discussing Patent Owner’s
`contentions regarding Exhibit 1002. See Dec. 54–58 (citing 37 C.F.R.
`§§ 42.2, 42.53, 42.63, 42.64).1 For example, we acknowledged that “[a]s
`Patent Owner correctly points out, Exhibit 1002, the purported declaration of
`Dr. Winkler, ‘does not state that the testimony is true or believed to be true,
`much less reference the penalty for making willful false statements.’” Id.
`at 54. We also agreed with Patent Owner that it timely objected to
`Exhibit 1002, which sufficiently put Petitioner on notice, but Petitioner
`failed to submit supplemental evidence in response by the required deadline.
`Id. at 55–57. Nevertheless, we found that Patent Owner suffered no undue
`
`
`1 Our regulations allow us to waive or suspend a requirement of part 42 of
`our Rules. See 37 CFR § 42.5(b).
`
`3
`
`
`
`IPR2020-00770
`Patent 9,604,901 B2
`
`prejudice, and thus, denied Patent Owner’s Motion to Exclude Exhibit 1002.
`Id. at 58.
`In its Request for Rehearing, Patent Owner argues that “[t]he Board
`does not have discretion to allow unsworn statements that fail to comply
`with the statutory sworn-testimony requirements, and it cannot rely on such
`statements over a timely, uncured objection just by asserting a lack of
`‘prejudice.’” Reh’g Req. 7. According to Patent Owner, the prejudice
`suffered is that “the Board actually relied on the challenged document.” Id.
`at 8. Patent Owner, however, does not point to where this alleged prejudice
`was previously addressed. See 37 C.F.R. § 42.71(d).
`Instead, in our Decision, we explained why Patent Owner suffered no
`undue prejudice. Dec. 58. Specifically, we pointed out that Patent Owner
`deposed Dr. Winkler, under oath, on his opinions in Exhibit 1002. Id.; see
`also Paper 44, 63:12–15 (“JUDGE SCHNEIDER: Doesn’t the fact that you
`were able to depose Petitioner's expert cure any issues that you might have
`had with the lack of authentication? MR. CARSTEN: Well, Your Honor,
`certainly we were able to depose him.”). Indeed, the record shows that,
`during trial, Patent Owner acknowledged that it did not suffer a specific
`cognizable prejudice. Dec. 58 (citing Paper 44, 64:5–6).
`Patent Owner does not identify where we misapprehended or
`overlooked its arguments as to Exhibit 1002. Rather, Patent Owner disagrees
`with our decision to deny its Motion to Exclude Exhibit 1002. It is not an
`abuse of discretion to have made an analysis or reached a conclusion with
`which a party disagrees. Thus, Patent Owner’s Request for Rehearing is
`denied.
`
`4
`
`
`
`IPR2020-00770
`Patent 9,604,901 B2
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`FOR PETITIONER:
`Ivor R. Elrifi
`Erik B. Milch
`Cooley LLP
`ielrifi@cooley.com
`emilch@cooley.com
`
`FOR PATENT OWNER:
`Stephen B. Maebius
`George Quillin
`Daniel R. Shelton
`Foley & Lardner LLP
`smaebius@foley.com
`gquillin@foley.com
`dshelton@foley.com
`
`Shaun R. Snader
`United Therapeutics Corp.
`ssnader@unither.com
`
`Douglas Carsten
`Richard Torczon
`Wilson, Sonsini, Goodrich & Rosati
`dcarsten@wsgr.com
`rtorczon@wsgr.com
`
`
`
`5
`
`
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