`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`LIQUIDIA TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`UNITED THERAPEUTICS CORPORATION
`Patent Owner
`
`
`
`Patent No. 10,716,793 B2
`Issue Date: July 21, 2020
`Title: TREPROSTINIL ADMINISTRATION BY INHALATION
`_______________
`
`Inter Partes Review No. IPR2021-00406
`____________________________________________________________
`
`PATENT OWNER’S NOTICE
`OF SUPPLEMENTAL AUTHORITY & STIPULATION
`
`
`
`
`
`4835-2696-2674
`
`
`
`IPR2021-00406
`
`
`
`Notice of Supplemental Authority
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`Patent Owner United Therapeutics Corporation (“UT”) submits this paper to
`
`alert the Board to authority that recently became available and that is relevant to its
`
`institution decision, Minerva Surgical, Inc. v. Hologic, Inc., __ U.S. __, 141 S.Ct.
`
`2298, 2021 WL 2653265 (June 29, 2021), and to make a stipulation simplifying
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`the issues.
`
`Petitioner argued that “Board should not discretionarily deny” institution
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`because UT is asserting an assignor estoppel defense in parallel district court
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`proceedings based on an inventor’s ties to Liquidia. Pet. at 4. UT rejoined, in part,
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`that its assignor estoppel defense is far from a fait accompli and may not survive
`
`the Supreme Court’s decision in the then-pending Minerva case. POPR at 21-22.
`
`On June 29, 2021, the Supreme Court issued its opinion in Minerva and
`
`limited assignor estoppel such that it applies only when assertion of invalidity
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`breaches an express or implied promise by the assignor. Minerva, slip op. at 14-
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`15. Examples of where assignor estoppel would not apply include “a common
`
`employment arrangement” where the employee assigns rights in any future
`
`inventions developed in the course of employment to the employer without an
`
`express or implied promise of validity. Id. at 15.
`
`In view of Minerva and in order to simplify the issues in this proceeding, UT
`
`makes the following stipulation:
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`4835-2696-2674
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`1
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`IPR2021-00406
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`
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`Notice of Supplemental Authority
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`Patent Owner stipulates that, if an IPR is not instituted based upon any
`
`of the grounds presented in IPR2021-00406, then Patent Owner will not
`
`assert the doctrine of assignor estoppel in the parallel Delaware district
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`court litigation against the grounds presented in IPR2021-00406.
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`Thus, if the Board exercises its discretion under § 314(a) to not institute trial,
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`assignor estoppel will not prevent Petitioner from pressing the invalidity arguments
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`identified in its Petition in the parallel district court proceeding.
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`This proffered stipulation is probative because Petitioner’s invalidity
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`arguments and prior art in the Petition substantially overlap with Petitioner’s prior
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`art contentions in the district court litigation. Thus, should the Board institute in
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`this proceeding, the same arguments will be litigated in both tribunals, with the
`
`attendant inefficiency and potential for conflicting outcomes. This is precisely the
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`scenario Fintiv’s fourth factor seeks to avoid. See Sotera Wireless, Inc. v. Masimo
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`Corp., IPR2020-01019, Paper 12 at 18-19 (PTAB Dec. 1, 2020) (precedential)
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`(finding a stipulation that avoids duplicative PTAB and district court arguments to
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`weigh “strongly in favor of [not] exercising discretion to deny institution under 35
`
`U.S.C. § 314(a)”).
`
`Petitioner has argued that this stipulation is ineffective because assignor
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`estoppel cannot be raised (or dropped) on an issue-by-issue basis, but this
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`argument is without merit. Petitioner has provided no authority for its claim that a
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`4835-2696-2674
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`IPR2021-00406
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`
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`Notice of Supplemental Authority
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`court cannot enforce such an agreement and for good reason. Factual stipulations
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`are “binding and conclusive” and “have the effect of withdrawing a fact from issue
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`and dispensing wholly with the need for proof of fact.” Christian Legal Society
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`Chapter of the Univ. of Hastings of California v. Martinez, 561 U.S. 661, 677-78
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`(2010) (quoting 83 C.J.S., Stipulations § 93 (2000)). Furthermore, as Minerva
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`makes clear, assignor estoppel is available only where an inventor/assignor later
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`attempts to contradict earlier-made representations. This illustrates that the
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`doctrine depends on the content of the representations, and could apply as to
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`certain arguments (e.g., § 112) but not others (§§ 102/103), depending on the facts.
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`In the context of a Fintiv analysis, the Board has repeatedly found that
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`factual stipulations to not assert particular claims or defenses in district court are
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`effective to mitigate “any concerns of duplicative efforts between the district court
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`and the Board, as well as concerns of potentially conflicting decisions.” See, e.g.,
`
`Microchip Technology Inc. v. Bell Semiconductor, LLC, 2021 WL 1973563 at *6
`
`(2021)(quoting Sotera Wireless, Paper 12 at 19) (relying on stipulation waiving
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`limited defenses in parallel district court proceeding); SK Innovation Co. Ltd. v. LG
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`Chem, Ltd., 2021 WL 127133 *9 (PTAB Jan. 12, 2021) (“Patent Owner’s
`
`stipulation ensures that it will not assert any claim in the district court action that is
`
`not addressed in the ITC’s Final Determination”; finding the stipulation weighed in
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`favor of exercising the Board’s discretion to deny the Petition under § 314(a)).
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`4835-2696-2674
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`3
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`IPR2021-00406
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`
`
` July 20, 2021
`
`
`
`
`
`Date
`
`FOLEY & LARDNER LLP
`3000 K St NW
`Washington Harbour
`Washington, DC 20007
`Telephone: (202) 672-5569
`Facsimile:
`(650) 856-3710
`
`Notice of Supplemental Authority
`
`
`
`
`
`By /Stephen B. Maebius/
`
`
`
`
`
`Stephen B. Maebius
`Registration No. 35,264
`
`
`4835-2696-2674
`
`4
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`
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`IPR2021-00406
`
`
`
`Notice of Supplemental Authority
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Notice of Supplemental Authority & Stipulation was served on counsel of
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`record for Petitioner on July 20, 2021, by delivering a copy via email to the
`
`counsel of record for the Petitioner at the following addresses:
`
`zLiquidiaIPR@cooley.com
`ielrifi@cooley.com
`emilch@cooley.com
`dkannappan@cooley.com
`
`
`
`
`Date
`
`FOLEY & LARDNER LLP
`3000 K St NW
`Washington Harbour
`Washington, DC 20007
`Telephone: (202) 672-5569
`Facsimile:
`(650) 856-3710
`
` July 20, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`By /Stephen B. Maebius/
`
`
`
`
`
`Stephen B. Maebius
`Registration No. 35,264
`
`
`
`
`4835-2696-2674
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`5
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`
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