`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 6
`Entered: April 13, 2021
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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, ZHENYU YANG, and
`DAVID COTTA, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`ORDER
`Granting Patent Owner’s Request
`to Extend the Due Date for Preliminary Response
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`On January 7, 2021, Liquidia Technologies, Inc. (“Petitioner”) filed a
`
`Petition (Paper 2), seeking an inter partes review of claims 1–8 of U.S.
`
`Patent No. 10,716,793 B2. On April 8, United Therapeutics Corporation
`
`(“Patent Owner”) emailed the Board, requesting a conference call to discuss
`
`“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).” Ex. 3001. Patent Owner stated that Petitioner would
`
`oppose such a request. Id. On April 9, the panel instructed the parties to
`
`briefly describe their respective position via email, and the parties complied.
`
`Id. On April 12, the panel held a conference with the parties. During the
`
`conference, each party presented its argument extensively. Because of the
`
`time-sensitive nature of the matter, we consider Patent Owner’s extension
`
`request based on the conference to avoid the additional time that would be
`
`required for briefing. Based on the circumstances involved, Patent Owner’s
`
`request to extend the due date for the Preliminary Response by two weeks is
`
`granted.
`
`Patent Owner states that it intends to disqualify certain references
`
`asserted by Petitioner, including Voswinckel 20061 and Ghofrani,2 as prior
`
`art. Patent Owner represents that, to accomplish this, it is in the process of
`
`obtaining the declarations of the co-authors of those articles. But, according
`
`to Patent Owner, it has run into some difficulty because the authors of those
`
`articles reside in Germany and, due to the rising COVID infections there, the
`
`
`
`1 Voswinckel et al., Inhaled Treprostinil for Treatment of Chronic
`Pulmonary Arterial Hypertension, 144 Annals of Internal Medicine 149–50
`(2006) (Ex. 1009).
`2 Ghofrani et al., New Therapies in the Treatment of Pulmonary
`Hypertension, 30 HERZ 296–302 (2005) (Ex. 1010).
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`German government has imposed a lockdown from March 28 to April 18.
`
`Specifically, Patent Owner argues the putative declarants are “medical
`
`doctors in a foreign country who are busy treating patients in the midst of a
`
`pandemic.”3 Ex. 3001.
`
`Patent Owner also represents that because certain records needed to
`
`prepare the declarations are 15 years old, they are not fully electronic.
`
`According to Patent Owner, access to the records is more difficult because
`
`of the lockdown in Germany. Patent Owner acknowledges the impact of the
`
`delay on the proceeding but argues that its request for a two-week extension
`
`is narrowly tailored, balancing the issues caused by the pandemic and the
`
`Board’s mandate to provide a just and speedy resolution in the proceeding.
`
`Petitioner argues that the declarants Patent Owner is working with in
`
`this proceeding already provided declarations on similar issues, including
`
`Exhibits 2020, 2026–2028, and 2097–2099, in IPR2017-01621. Petitioner
`
`also argues that the lockdown in Germany is scheduled to be lifted on April
`
`18, which would afford Patent Owner several weeks to obtain necessary
`
`documents before filing the Preliminary Response without a need for an
`
`extension. Petitioner points out that Patent Owner has been aware of the
`
`issues in this proceeding since January 7, when the Petition was filed.
`
`According to Petitioner, “[t]here is no excuse for the Patent Owner waiting
`
`three months to identify the need for an extension based on expert schedules
`
`during the pandemic.” Ex. 3001.
`
`
`
`3 Patent Owner also argues that it needs the extension because of “the
`transfer of . . . co-counsel in the IPR to a new firm.” Ex. 3001. On the facts
`of this case, however, counsel changing firms does not constitute good cause
`for granting the requested extension.
`
`3
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`Patent Owner responds that new declarations are necessary because
`
`Voswinckel 2006 is a new reference not previously asserted, and the
`
`unpatentability arguments in this Petition are different from those in
`
`IPR2017-01621. Patent Owner represents that its CEO, after receiving the
`
`Petition, has been communicating with the potential declarants since
`
`February; yet, because of the pandemic restrictions, has not been able to
`
`secure the declarations desired. Patent Owner further states that, without the
`
`extension, it would not have sufficient time to obtain the declarations after
`
`the lockdown is lifted on April 18.
`
`We recognize the difficulties the pandemic has caused for all parties
`
`involved. As a result, we grant Patent Owner’s request to extend the due date
`
`for its Preliminary Response by two weeks, i.e., from May 3 to May 17. We,
`
`however, caution Patent Owner to prepare for any necessary alternative
`
`approaches in the event that the pandemic lockdown is extended past
`
`April 18 in Germany, or other challenges emerge,4 because the Board is
`
`unlikely to grant additional extensions.
`
`ORDER
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s request to extend the due date for its
`
`Preliminary Response by two weeks is granted;
`
`FURTHER ORDERED that the extended due date for Patent Owner’s
`
`Preliminary Response is May 17, 2021.
`
`
`
`
`
`4 During the conference, the panel did not receive any meaningful response
`when inquired about such preparation. In fact, Patent Owner acknowledges
`that if the lockdown continues, at some point, it may become unfeasible to
`obtain the desired declarations.
`
`4
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`FOR PETITIONER:
`
`Ivor R. Elrifi
`Erik B. Milch
`COOLEY LLP
`ielrifi@cooley.com
`emilch@cooley.com
`
`
`FOR PATENT OWNER:
`
`Stephen B. Maebius
`George Quillin
`Daniel R. Shelton
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`dshelton@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas H. Carsten
`April E. Weisbruch
`Judy Mohr, Ph.D.
`MCDERMOTT WILL & EMERY LLP
`dcarsten@mwe.com
`aweisbruch@mwe.com
`jmohr@mwe.com
`
`Richard Torczon
`Grace A. Winschel
`WILSON, SONSINI, GOODRICH & ROSATI
`rtorczon@wsgr.com
`gwinschel@wsgr.com
`
`5
`
`
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