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`Maebius, Steve
`Precedential_Opinion_Panel_Request
`Kannappan, Deepa; Houston, Michael R.; UT-793; UTCvLiquidia-IPR@mwe.com; zLiquidiaIPR
`IPR2021-00406 || POP Request
`Thursday, August 18, 2022 2:58:31 PM
`2022.08.16 [406-79] Patent Owner Request for Rehearing.pdf
`
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`Patent Owner United Therapeutics Corporation (UT) hereby requests review by the
`Precedential Opinion Panel of the Final Written Decision in the above-captioned IPR. UT has
`concurrently filed a request for rehearing of the Final Written Decision.
`
`Based on my professional judgment, I believe this case requires an answer to the following
`precedent-setting question of exceptional importance: if a person of ordinary skill in the art
`must rely on a “research aid” to find a reference, does the date of public accessibility of that
`reference depend on the date on which the research aid became publicly accessible? I further
`believe that the panel’s decision is contrary to the following decisions and statutes: 35 U.S.C.
`§102 (pre-AIA); Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008); Constant v.
`Advanced Micro-Devices, Inc., 848 F.2d 1560 (Fed. Cir. 1988); In re Lister, 583 F.3d 1307 (Fed.
`Cir. 2009).
`
`The detailed reasons for requesting Precedential Opinion Panel review are as follows. As
`discussed in greater detail in UT’s accompanying rehearing request, the defining feature of a
`“printed publication” under §102(b) is whether the reference was publicly accessible to a
`person of ordinarily skill in the art before the critical date. Here, the critical date is one year
`before the priority date. In concluding that the challenged claims of the ’793 patent are
`obvious, however, the Final Written Decision relies on two abstracts—Voswinckel JESC (Ex.
`1007) and Voswinckel JAHA (Ex. 1008)—that were not publicly accessible until after that
`critical date.
`
`In the panel’s view, the two Voswinckel references were prior art under §102(b) because a
`skilled artisan could have found them by way of two research aids—Ghofrani (Ex. 1010) and
`Sulica (Ex. 1104), respectively. But neither Ghofrani nor Sulica was itself publicly accessible
`more than one year before the priority date. So even assuming Ghofrani and Sulica provide a
`skilled artisan with the requisite “roadmap” to find the Voswinckel abstracts (see FWD at 11),
`neither could have led the skilled artisan to the relevant Voswinckel abstract before the critical
`date. The panel’s decision effectively allows a petitioner to use a research aid published within
`a year of the application date to bootstrap another reference that was not found publicly
`accessible on its own terms.
`
`That conclusion warrants the review of the Precedential Opinion Panel. This case lies at the
`IPR2021-00406
`Ex. 3003
`
`

`

`intersection of public accessibility and research aids: can a petitioner establish the public
`availability of an otherwise nonpublic reference before the §102(b) critical date by pointing to
`a research aid from after the critical date? UT submits that the answer follows necessarily
`from the legal principles discussed above: if a petitioner is relying on research aids to establish
`public accessibility of an otherwise-unavailable reference, the date of public availability is the
`date on which the research aid became publicly accessible. But the panel’s decision to the
`contrary makes clear that further guidance on this question is sorely needed.
`
`For these reasons, UT respectfully requests the review by the Precedential Opinion Panel.
`
`Respectfully submitted,
`
`/Stephen B. Maebius/
`Stephen B. 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
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