Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 76
`Entered: May 17, 2022
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIQUIDIA TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-00406
`Patent 10,716,793 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, CHRISTOPHER M. KAISER,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 76
`Entered: May 17, 2022
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LIQUIDIA TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`UNITED THERAPEUTICS CORPORATION,
`Patent Owner.
`____________
`
`IPR2021-00406
`Patent 10,716,793 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, CHRISTOPHER M. KAISER,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`On May 11, 2022, Patent Owner contacted the Board by email to
`request authorization to file a motion to submit supplemental information.
`Ex. 3002. Specifically, Patent Owner sought to submit a post-trial brief filed
`by Petitioner in the parallel proceeding in District Court. Id. On May 12,
`2022, Petitioner contacted the Board by email, arguing that, if Patent Owner
`were permitted to submit its proposed supplemental information, Petitioner
`should be likewise be permitted to submit its own supplemental information.
`Id. Specifically, Petitioner sought to submit the District Court testimony of
`expert witnesses who testified on Patent Owner’s behalf, as well as a not-
`yet-filed post-trial brief scheduled to be filed soon by Patent Owner. Id. In
`addition to each party seeking authorization to move to submit its own
`supplemental information, both parties indicated that they opposed the other
`party’s request for authorization. Id.
`During the final trial hearing on May 13, 2022, Judges Franklin,
`Cotta, and Kaiser heard brief arguments from both parties on the issue of
`whether to authorize the parties’ requested motions to submit supplemental
`information. The transcript of those arguments will be entered into the
`record in due course. For the reasons explained below, we do not authorize
`either party to move to submit its supplemental information.
`
`
`PATENT OWNER’S REQUEST FOR AUTHORIZATION
`Patent Owner requests authorization to file a motion to submit
`supplemental information under 37 C.F.R. § 42.123(b). Ex. 3002. To
`prevail on such a motion, Patent Owner would need to show that “the
`supplemental information reasonably could not have been obtained earlier,”
`as well as that “consideration of the supplemental information would be in
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`the interests-of-justice.” 37 C.F.R. § 42.123(b). Based on the circumstances
`involved, it would be futile for Patent Owner to attempt to make the
`requisite showing with respect to the latter requirement.
`First, according to Patent Owner, the District Court post-trial brief is
`intended to bolster or corroborate the present record testimony of
`Petitioner’s expert witness, Dr. Gonda, on the issue of enablement of claims
`4, 6, and 7 of the challenged patent. During the hearing, however, Patent
`Owner admitted that enablement was not at issue in the present proceeding.
`Because the present proceeding does not involve the issue on which Patent
`Owner argues the proposed supplemental information would be helpful, we
`are not persuaded that Patent Owner’s proposed motion could show that the
`submission of Patent Owner’s proposed supplemental information would be
`in the interest of justice.
`Moreover, there is no further briefing or argument on any issue
`scheduled in the present proceeding, so neither party would have any
`opportunity to present arguments based on the supplemental information
`Patent Owner seeks to submit. The absence of any way for either party to
`make use of the proposed supplemental information in supporting its
`arguments is another reason why Patent Owner could not show that the
`submission of that information would be in the interest of justice.
`Because Patent Owner has not persuaded us that it could show in its
`proposed motion that submission of its proposed supplemental information
`would be in the interest of justice, we do not authorize Patent Owner’s
`motion to submit that information.
`
`
`3
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`PETITIONER’S REQUEST FOR AUTHORIZATION
`Petitioner conditions its request for authorization on the Board’s
`entertaining Patent Owner’s request for authorization. Ex. 3002. As
`discussed above, we do not grant Patent Owner’s request. Thus, Petitioner’s
`request is rendered moot.
`
`For the foregoing reasons, it is
`ORDERED that Patent Owner is not authorized to file its proposed
`motion to submit supplemental information; and
`FURTHER ORDERED that Petitioner’s request for authorization is
`
`moot.
`
`
`
`
`4
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`For PETITIONER:
`
`Ivor R. Elrifi
`Erik B. Milch
`Deepa Kannappan
`Sanya Sukduang
`Jonathan R. Davies
`COOLEY LLP
`ielrifi@cooley.com
`emilch@cooley.com
`dkannappan@cooley.com
`ssukduang@cooley.com
`jdavies@cooley.com
`zLiquidiaIPR@cooley.com
`zpatdocketing@cooley.com
`
`
`For PATENT OWNER:
`
`Stephen B. Maebius
`Michael R. Houston
`Jason N. Mock
`FOLEY & LARDNER LLP
`smaebius@foley.com
`mhouston@foley.com
`jmock@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas H. Carsten
`April E. Weisbruch
`Judy Mohr, Ph.D.
`Arthur P. Dykhuis
`Jiaxiao Zhang
`Amy L. Mahan
`Mandy H. Kim
`MCDERMOTT WILL & EMERY LLP
`dcarsten@mwe.com
`
`5
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`aweisbruch@mwe.com
`jmohr@mwe.com
`adykhuis@mwe.com
`jiazhang@mwe.com
`amahan@mwe.com
`mhkim@mwe.com
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
