`571-272-7822
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`
`
` Paper No. 84
`
`
` Entered: April 6, 2017
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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 April 5, 2017, a conference call was conducted among counsel for
`Petitioner, SteadyMed LTD (“SteadyMed”), counsel for Patent Owner,
`United Therapeutics Corporation (“UTC”), and Judges Chang and Harlow.
`A court reporter was also present.1 The purpose of the call was to address
`SteadyMed’s request for authorization to file a motion requesting action by
`the Board with regard to U.S. Patents Nos. 9,604,901 B2 (“the ’901 patent”)
`and 9,593,066 B2 (“the ’066 patent”). In particular, SteadyMed seeks
`cancelation of the claims of the ’901 and ’066 patents as not being
`patentably distinct from the claims of the ’393 patent.
`We entered a Final Written Decision (Paper 82) under 35 U.S.C.
`§ 318(a), holding claims 1–22 of the ’393 patent unpatentable, on March 31,
`2017. Prior to entry of that Decision, the ’901 patent and the ’066 patent
`issued from continuing applications to the ’393 patent. Neither the
`’901 patent nor the’066 patent is an involved patent in the instant inter
`partes review. See Paper 1, 1 (SteadyMed requests an inter partes review as
`to claims 1–22 of the ’393 patent, not the claims of the ’066 patent and the
`’901 patent). Therefore, SteadyMed’s request to cancel the claims of
`non-involved patents—namely, the claims of the ’901 patent or the
`’066 patent—is denied. See 35 U.S.C. § 311(b) (“[a] petitioner in an inter
`partes review may request to cancel as unpatentable 1 or more claims of a
`patent”).
`
`
`1 The parties are reminded that a transcript of the call is to be filed as an
`exhibit to this proceeding.
`
`2
`
`
`
`IPR2016-00006
`Patent 8,497,393 B2
`
`
`
`Accordingly, SteadyMed’s request for authorization to file a motion
`requesting action by the Board concerning the ’901 and ’066 patents is
`denied.
`It is
`ORDERED that SteadyMed’s request for authorization to file a
`motion requesting action by the Board concerning the ’901 and ’066 patents
`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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