`571.272.7822
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` Paper No. 76
`Entered: May 17, 2022
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`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
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`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
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`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.
`
`
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`4
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`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
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`
`
`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
`
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`6
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