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`Paper 17
`July 23, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`LIQUIDIA TECHNOLOGIES, INC.,
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`Petitioner
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`v.
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`UNITED THERAPEUTICS CORPORATION,
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`Patent Owner
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`
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`IPR2021-00406
`U.S. Patent No. 10,716,793 B2
`Issue Date: July 21, 2020
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`
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`Title: Treprostinil Administration by Inhalation
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`
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`PETITIONER’S RESPONSE TO PATENT OWNER’S NOTICE OF
`SUPPLEMENTAL AUTHORITY & STIPULATION
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`
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`IPR2021-00406
`
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`Paper 17
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`July 23, 2021
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`Petitioner Liquidia submits this paper in response to Patent Owner UTC’s
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`Notice of Supplemental Authority and Stipulation (“Notice”). Paper 16.
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`UTC’s Notice should be denied as improper as it fails to explain how the
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`Supreme Court’s decision in Minerva Surgical v. Hologic, 141 S. Ct. 2298 (2021)
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`applies to the instant matter, and instead presents only attorney argument as to why
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`its conditional stipulation should be considered. See Samsung Elecs. Am. v. Prisue
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`Eng’g, IPR2017-01188, Paper 65 (P.T.A.B. Sept. 10, 2018) (prohibiting substantive
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`argument in Notice of Supplemental Authority); Desper Prods. v. QSound Labs, 157
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`F.3d 1325, 1335 (Fed. Cir. 1998) (noting parties may “bring supplemental
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`authorities to the court’s attention, not supplemental argument”). To be clear, while
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`placing confines on the doctrine, which are inapplicable to the Board’s institution
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`decision here, the Supreme Court did not eliminate the doctrine of assignor estoppel
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`in Minerva‒and UTC is still asserting assignor estoppel before the district court.
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`UTC’s Notice is thus nothing more than a vehicle to improperly supplement its
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`briefing and offer a conditional stipulation it could have presented in its POPR.
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`UTC’s Notice centers on its conditional stipulation to not assert assignor
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`estoppel at the district court only for certain invalidity issues. UTC couches its
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`conditional stipulation as “factual” without stipulating to facts that actually bear on
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`assignor estoppel. Paper 16 at 2-3. UTC does not, for instance, stipulate as fact that
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`Dr. Robert Roscigno was subject to “a common employment arrangement” requiring
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`1
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`Paper 17
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`IPR2021-00406
`July 23, 2021
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`him to assign the rights in any future inventions developed during his employment
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`with UTC without an express or implied promise of validity. Nor does UTC stipulate
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`as fact that Dr. Roscigno has made consistent representations regarding the subject
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`matter of the ’793 patent, negating assignor estoppel. Had UTC made these factual
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`stipulations, the arguments offered in UTC’s paper may have merit. Having failed
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`to do so, however, UTC’s conditional stipulation is not factual in nature and does
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`not weigh in favor of denying institution.
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`The cases cited by UTC are inapposite and do not support a denial of
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`institution. In SK Innovation, the Patent Owner stipulated to dropping all claims not
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`addressed in the ITC’s Final Determination, not a subset of issues as UTC proposes
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`here. SK Innovation v. LG Chem, IPR2020-01240, Paper 15 at 19 (P.T.A.B. Jan. 12,
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`2021). In Sotera and Microchip, the Petitioner stipulated to not pursue grounds
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`instituted in the IPR before the district court, taking entire issues off the table to
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`avoid duplicity. Sotera Wireless v. Masimo Corp., IPR2020-01019, Paper 12 at 18-
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`19 (P.T.A.B. Dec. 1, 2020); Microchip Tech. v. Bell Semiconductor, IPR2021-
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`00147, Paper 20 at 12-15 (P.T.A.B. May 14, 2021). Even considering its conditional
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`stipulation, UTC still intends to argue assignor estoppel at the district court, thereby
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`failing to completely eliminate issues between the parties at the district court.
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`Further, UTC’s statements to the Board provide no assurances that the stipulation
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`will be binding as UTC has not filed any stipulation with the district court. In fact,
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`2
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`Paper 17
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`IPR2021-00406
`July 23, 2021
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`in IPR2020-00770, UTC made express statements to the Board regarding claim
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`construction (IPR2020-00770, Paper 12 at 11), but later retracted those statements
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`before the district court. (Id., Paper 25 at 8).
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`Lastly, assignor estoppel prevents all invalidity challenges to a patent, not, as
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`UTC suggests without support, to only certain invalidity defenses. See Pandrol USA
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`v. Airboss Ry. Prods., 424 F.3d 1161, 1167 (Fed. Cir. 2005) (“[A]ssignor estoppel
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`prevents an assignor from asserting that its own patent . . . is invalid and worthless.”);
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`Checkpoint Sys. v. All-Tag Sec. S.A., 412 F.3d 1331, 1336 (Fed. Cir. 2005) (assignor
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`estoppel “prevents a party that assigns a patent to another from later challenging the
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`validity of the assigned patent.”). The accused infringer in Minerva only challenged
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`the asserted patent on § 112 grounds, and the Supreme Court did not hold that
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`assignor estoppel can be applied to some but not all invalidity arguments. Minerva,
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`141 S. Ct. at 2303–04. As such, UTC’s argument that assignor estoppel applies on
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`a piecemeal basis rings hollow. For this reason, and as also explained in Liquidia’s
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`Petition, UTC’s continued assertion of assignor estoppel, even considering its
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`conditional stipulation, warrants the Board exercise its discretion and institute the
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`instant Petition. Paper 1 at 5.
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`3
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`Paper 17
`July 23, 2021
`Respectfully submitted,
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`COOLEY LLP
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`By: /Ivor R. Elrifi/
`Ivor R. Elrifi
`Reg. No. 39,529
`Counsel for Petitioner
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`IPR2021-00406
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`
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`Dated: July 23, 2021
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, DC 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
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`4
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`IPR2021-00406
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`CERTIFICATE OF SERVICE
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`Paper 17
`July 23, 2021
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
`Response to Patent Owner’s Notice of Supplemental Authority & Stipulation was
`served on counsel of record for Patent Owner on July 23, 2021, by delivering a copy
`via email to the counsel of record for the Patent Owner at the following addresses:
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`UT-793@foley.com
`Stephen B. Maebius (smaebius@foley.com)
`George Quillin (gquillin@foley.com)
`Jason N. Mock (jmock@foley.com)
`FOLEY & LARDNER LLP
`
`Douglas H. Carsten (dcarsten@mwe.com)
`April E. Weisbruch (aweisbruch@mwe.com)
`Judy Mohr (jmohr@mwe.com)
`MCDERMOTT WILL & EMERY LLP
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`Shaun R. Snader (ssnader@unither.com)
`UNITED THERAPEUTICS CORP.
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`By: /Ivor R. Elrifi/
`Ivor R. Elrifi
`Reg. No. 39,529
`Counsel for Petitioner
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`
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`Dated: July 23, 2021
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW
`Suite 700
`Washington, DC 20004
`Tel: (212) 479-6840
`Fax: (212) 479-6275
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`
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