Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 53
`Entered: March 16, 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. 53
`Entered: March 16, 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 March 15, 2022, Judges Franklin, Cotta, and Kaiser held a
`conference call with counsel for both parties to discuss Patent Owner’s email
`request for guidance from the Board regarding the scheduling of a deposition
`of one of Petitioner’s reply declarants, Dr. Nicholas Hill. This order
`memorializes the oral orders we issued during the conference call.
`
`
`BACKGROUND
`Petitioner filed its Reply in this proceeding on February 10, 2022.
`Previously, the parties agreed to extend the due date for Patent Owner’s Sur-
`Reply to March 16, 2022, a date Petitioner is unwilling to agree to extend
`further. Along with its Reply, Petitioner filed several declarations of
`witnesses, including one by Dr. Nicholas Hill. See Ex. 1106.
`On or about March 1, 2022, Patent Owner requested that Petitioner
`provide dates when its reply declarants would be available for deposition.
`The parties were able to agree on deposition dates for other witnesses, but
`Petitioner could not provide a date for Dr. Hill’s deposition before the
`March 16 due date of Patent Owner’s Sur-Reply. After apparently
`protracted negotiations, the parties approached us to resolve the dispute.
`Patent Owner argues that it is entitled to take Dr. Hill’s deposition and
`that its Sur-Reply should not be due until after it has had an opportunity to
`take the deposition. Further, Patent Owner argues that, in an attempt to
`make it possible for the deposition to go forward, it offered to reduce the
`length of the deposition to two and a half hours and to take the deposition on
`a weekend or evening, if necessary. Petitioner argues that, due to his clinical
`responsibilities and participation in other litigation, Dr. Hill is unavailable,
`even for a shortened deposition, at any time prior to April 14, 2022. Further,
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`Petitioner argues that Patent Owner waived its right to the deposition by
`failing to comply with the notice requirement of Rule 42.53(d)(4).
`
`
`ANALYSIS
`Routine discovery in this proceeding includes “[c]ross-examination of
`affidavit testimony prepared for the proceeding.” 37 C.F.R.
`§ 42.51(b)(1)(ii). Because Dr. Hill’s testimony was prepared for this
`proceeding, Patent Owner is entitled to cross-examine Dr. Hill on that
`testimony “within such time period as the Board may set.” Id. It is correct,
`as Petitioner notes, that “[t]he party seeking the deposition must file a notice
`of the deposition at least ten business days before a deposition,” and the
`parties agree that Patent Owner did not comply with this requirement.
`37 C.F.R. § 42.53(d)(4). That said, we do not believe that, at least under the
`circumstances prevailing here, denying an authorized deposition altogether
`is an appropriate sanction for this violation. Accordingly, we decline to find
`that Patent Owner has waived its right to depose Dr. Hill.
`At the same time, we are required to follow a schedule for this
`proceeding that permits us to issue a final written decision no more than one
`year after trial was instituted. 35 U.S.C. § 316(a)(11). Delaying the filing of
`Patent Owner’s Sur-Reply until some time after Dr. Hill becomes available
`for deposition on April 14, 2022, would make following this schedule quite
`difficult, so we also will not pursue this course.
`Instead, Patent Owner’s Sur-Reply will remain due on March 16,
`2022, even though Dr. Hill’s deposition cannot be completed by then. As
`Patent Owner proposed during the conference call, Patent Owner will be
`permitted to take Dr. Hill’s deposition on any date to which the parties can
`agree that falls on or before April 15, 2022. If the parties do not agree to an
`
`3
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`earlier date, Petitioner shall make Dr. Hill available for deposition on
`April 15, 2022. The deposition will be limited to two and one-half hours on
`the record. Finally, following Dr. Hill’s deposition, both parties will have an
`opportunity to file two-page observations on cross-examination. These
`observations will be due no later than two business days after the conclusion
`of the deposition.
`
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Sur-Reply shall be filed no later than
`March 16, 2022;
`FURTHER ORDERED that Petitioner shall produce Dr. Nicholas Hill
`for a deposition, limited to two and one-half hours on the record, no later
`than April 15, 2022;
`FURTHER ORDERED that the parties may agree to a date earlier
`than April 15, 2022, but not to any later date, for Dr. Hill’s deposition; and
`FURTHER ORDERED that both parties are authorized to file
`observations on the cross-examination of Dr. Hill, with each set of
`observations not to exceed two pages, and with both sets of observations due
`no later than two business days after the conclusion of Dr. Hill’s deposition.
`
`
`
`4
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`For PETITIONER:
`
`Ivor R. Elrifi
`Erik B. Milch
`Deepa Kannappan
`Sanya Sukduang
`Jonathan R. Davies
`Lauren Krickl
`Douglas Cheek
`COOLEY LLP
`ielrifi@cooley.com
`emilch@cooley.com
`dkannappan@cooley.com
`ssukduang@cooley.com
`jdavies@cooley.com
`lkrickl@cooley.com
`dcheek@cooley.com
`
`For PATENT OWNER:
`
`Stephen B. Maebius
`Jason N. Mock
`FOLEY & LARDNER LLP
`smaebius@foley.com
`jmock@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas H. Carsten
`Mandy H. Kim
`MCDERMOTT WILL & EMERY LLP
`dcarsten@mwe.com
`mhkim@mwe.com
`
`
`
`5
`
`
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