Milch, Erik
`SMaebius@foley.com; Trials; zLiquidiaIPR; Elrifi, Ivor; Kannappan, Deepa; UTC-901@foley.com;
`ssnader@unither.com; wjackson@bsfllp.com; Torczon, Richard (External); dcarsten@mwe.com;
`aweisbruch@mwe.com; jmohr@mwe.com
`RE: Time sensitive response RE: IPR2021-00406 || request for conference call to request authorization for
`motion to extend due date for POPR
`Friday, April 9, 2021 3:55:09 PM
`
`From:
`To:
`
`Subject:
`
`Date:
`
`Mr. Kellogg,
`
`Petitioner opposes Patent Owner’s request, because Petitioner has not shown good cause for
`delaying the “just, speedy, and inexpensive resolution” of the proceeding. 37 CFR § 42.1.
`
`Although Patent Owner has not yet identified Lead and Backup counsel, it is clear from Patent
`Owner’s request that they have engaged no less than 6 attorneys and three separate law firms. The
`counsel that moved to a new law firm, Mr. Douglas Carsten, has been listed as counsel in the parties’
`district court and other inter partes review litigations since early 2020, and has been extensively
`involved in those proceedings, including knowledge and understanding of Petitioner’s grounds for
`institution of the instant petition. Finally, Mr. Carsten’s law firm switch did not prevent him from
`taking a deposition in another inter partes review between the parties earlier this week (Monday,
`4/5). Accordingly, Petitioner disagrees that this counsel changing law firms affects Patent Owner’s
`ability to meet its deadline three weeks from now and forms a “good cause” basis for its requested
`extension.
`
`As for accessing medical doctors overseas in a pandemic, Patent Owner received a copy of the
`Petition on January 7 and has been aware of Petitioner’s intention to rely on the prior art in question
`since at least November 13, when Liquidia identified them in the parallel district court litigation. The
`pandemic was present then and is now. There is no excuse for the Patent Owner waiting three
`months to identify the need for an extension based on expert schedules during the pandemic—
`especially in light of the fact that one of Petitioner’s experts was a critical care pulmonologist
`managing ICUs at the height of the pandemic during the winter holidays and was still able to file a
`declaration in support of the instant Petition. Further, Patent Owner is apparently already in
`possession of the “testimony” it seeks regarding the prior art status, as Patent Owner already
`submitted such testimony with its Patent Owner’s Preliminary Response in IPR2017-01621, which
`was nonetheless instituted on January 11, 2018. Watson Laboratories, Inc. v. United Therapeutics
`Corp., IPR2017-01621, Paper No. 10 (P.T.A.B. January 11, 2018). To the extent Patent Owner has
`chosen to find experts (separate from prior art authors) in a foreign country and is having difficulty
`accessing them, Patent Owner assumed the logistical challenges that come with that. Neither is
`good cause for extension of a regulatory deadline.
`
`IPR2021-00406
`Ex. 3001
`
`Sincerely,
`Erik Milch
`Counsel for Petitioner
`Reg. No. 42887
`
`

`

`From: SMaebius@foley.com <SMaebius@foley.com>
`Sent: Friday, April 9, 2021 1:55 PM
`To: Trials <Trials@USPTO.GOV>; zLiquidiaIPR <zLiquidiaIPR@cooley.com>; Elrifi, Ivor
`<ielrifi@cooley.com>; Milch, Erik <emilch@cooley.com>; Kannappan, Deepa
`<dkannappan@cooley.com>; UTC-901@foley.com; ssnader@unither.com; wjackson@bsfllp.com;
`rtorczon@wsgr.com; dcarsten@mwe.com; aweisbruch@mwe.com; jmohr@mwe.com
`Subject: RE: Time sensitive response RE: IPR2021-00406 || request for conference call to request
`authorization for motion to extend due date for POPR
`
`[External]
`
`Dear Mr. Kellogg,
`
`The reason Patent Owner seeks the extension of time for the POPR is based on the
`difficulties of accessing medical doctors in a foreign country who are busy treating
`patients in the midst of a pandemic (and whose testimony relates to a threshold
`question in the IPR of whether certain of Petitioner’s references qualify as prior art),
`as well as the transfer of our co-counsel in the IPR to a new firm.
`
`Sincerely,
`Steve Maebius
`
`Counsel for Patent Owner
`Reg. No. 35,264
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, April 9, 2021 11:05 AM
`To: zLiquidiaIPR@cooley.com; ielrifi@cooley.com; emilch@cooley.com; dkannappan@cooley.com;
`UTC - 901 <UTC-901@foley.com>; Shaun Snader <ssnader@unither.com>; William Jackson
`<wjackson@bsfllp.com>; Richard Torczon <rtorczon@wsgr.com>; dcarsten@mwe.com;
`aweisbruch@mwe.com; jmohr@mwe.com; Maebius, Steve <SMaebius@foley.com>
`Cc: Trials <Trials@USPTO.GOV>
`Subject: RE: Time sensitive response RE: IPR2021-00406 || request for conference call to request
`authorization for motion to extend due date for POPR
`
`** EXTERNAL EMAIL MESSAGE **
`Counsel,
`
` A
`
` conference call has been scheduled for 1 pm on Monday (4/12/21).
`
`
`The dial in number is: 877-934-8037
`The passcode is: 9450035
`
`We instruct Patent Owner to email the Board before 2 pm today to briefly describe the reason for its
`request of an extension. Petitioner may respond by briefly describing the reason for its opposition before
`COB today.
`
`
`

`

`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: SMaebius@foley.com <SMaebius@foley.com>
`Sent: Thursday, April 8, 2021 4:03 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: zLiquidiaIPR@cooley.com; ielrifi@cooley.com; emilch@cooley.com; dkannappan@cooley.com;
`UTC-901@foley.com; ssnader@unither.com; wjackson@bsfllp.com; Torczon, Richard (External)
`<rtorczon@wsgr.com>; dcarsten@mwe.com; aweisbruch@mwe.com; jmohr@mwe.com
`Subject: IPR2021-00406 || request for conference call to request authorization for motion to extend
`due date for POPR
`
`Dear Board,
`
`Patent Owner requests a conference call with the Board to request authorization for a motion to
`extend the due date for the Patent Owner Preliminary Response under 37 CFR 42.5(c) by 2 weeks
`(from May 3, 2021 until May 17, 2021). Patent Owner conferred with Petitioner, and Petitioner has
`stated it will oppose.
`
`Counsel for Patent Owner and Petitioner are available on April 12, 2021 (Monday).
`
`Sincerely,
`
`Steve Maebius
`Counsel for Patent Owner
`Reg. No. 35,264
`
`Stephen B. Maebius
`Foley & Lardner LLP
`3000 K St., NW
`Washington, DC 20007
`Office 202.672.5569
`Cell 202.352.0676
`
`View My Bio
`Visit Foley.com
`
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