`571-272-7822
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` Paper 81
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`
`Date October 26, 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 KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office, SCOTT R. BOALICK, Chief Administrative Patent
`Judge, and JACQUELINE WRIGHT BONILLA, Deputy Chief
`Administrative Patent Judge.
`
`PER CURIAM.
`
`
`
`ORDER
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`The Office received a request for Precedential Opinion Panel (POP)
`review of issues raised in the Board’s Final Written Decision. Ex. 3003; see
`Paper 78. In the request, Patent Owner argues that the Board improperly
`determined that the Voswinckel JESC (Ex. 1007) and Voswinckel JAHA
`(Ex. 1008) references were publicly accessible and therefore qualify as prior
`art under pre-AIA 35 U.S.C. § 102(b) because a person of ordinary skill in
`the art would have been able to find them with the benefit of certain research
`aids. Paper 79, 1–3; see Paper 78, 8–12. The request was referred to the
`POP panel referenced above.
`We have reviewed the request, the Board’s Final Written Decision,
`the Papers, and the Exhibits in the above-listed proceeding. We determine
`that the Board’s Final Written Decision did not address adequately whether
`the Voswinckel JESC and Voswinckel JAHA references qualify as prior art.
`See Paper 78, 8–12. Specifically, the Board’s analysis did not consider
`whether the research aids themselves were available prior to the critical date,
`such that a person of ordinary skill in the art would have used them to find
`Voswinckel JESC and Voswinckel JAHA. Id. at 12. Further, the Board’s
`analysis did not address whether the Voswinckel JESC and Voswinckel
`JAHA references were publicly accessible by way of their presentation
`and/or inclusion in distributed materials, such as at a conference or library.
`Paper 78, 8–12; see In re Klopfenstein, 380 F.3d 1345, 1350–52 (Fed. Cir.
`2004) (“The determination of whether a reference is a ‘printed publication’
`under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and
`circumstances surrounding the reference’s disclosure to members of the
`public.”).
`
`
`
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`However, because the record has been fully developed on these issues,
`the Board panel is best suited to make the appropriate factual findings for
`this analysis in its decision on rehearing. Accordingly, we deny Patent
`Owner’s request for POP review of the Final Written Decision. With this
`denial of POP review, authority over all issues in this case — including
`consideration of Patent Owner’s pending rehearing request — is returned to
`the original panel. We direct the Board, in its consideration on rehearing, to
`clearly identify whether the Voswinckel JESC and Voswinckel JAHA
`references qualify as prior art. Such analysis shall clarify whether the relied
`upon research aids were available prior to the critical date and whether the
`Voswinckel JESC and Voswinckel JAHA references were publicly
`accessible by way of their presentation and/or inclusion in distributed
`materials, such as at a conference or library.
`Accordingly, based on the foregoing, it is:
`ORDERED that the request for POP review is denied;
`FURTHER ORDERED that the original panel maintains authority
`over all matters, including considering the submitted rehearing request in
`view of the complete record; and
`FURTHER ORDERED that the Board, on rehearing, shall clearly
`identify whether the Voswinckel JESC and Voswinckel JAHA references
`qualify as prior art.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`For PETITIONER:
`Ivor R. Elrifi
`Erik B. Milch
`Deepa Kannappan
`Sanya Sukduang
`Lauren Krickl
`Douglas Cheek
`Jonathan Davies
`COOLEY LLP
`ielrifi@cooley.com
`emilch@cooley.com
`dkannappan@cooley.com
`ssukduang@cooley.com
`lkrickl@cooley.com
` dcheek@cooley.com
`jdavies@cooley.com
`
`For PATENT OWNER:
`Stephen B. Maebius
`George Quillin
`Jason N. Mock
`Michael Houston
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`jmock@foley.com
`mhouston@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`
`Douglas Carsten
`April E. Weisbruch
`Judy Mohr, Ph.D.
`Jiaxiao Zhang
`
`
`
`
`4
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`Mandy Kim
`Arthur Dykhuis
`Amy Mahan
`MCDERMOTT WILL & EMERY LLP
`dcarsten@mwe.com
`aweisbruch@mwe.com
`jmohr@mwe.com
`jazhang@mwe.com
`mhkim@mwe.com
`adykhuis@mwe.com
`amahan@mwe.com
`
`
`
`
`
`
`5
`
`
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