Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 30
`
` Entered: November 19, 2021
`
`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, CHRISTOPHER M. KAISER,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Authorization
`to File Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 30
`
` Entered: November 19, 2021
`
`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, CHRISTOPHER M. KAISER,
`and DAVID COTTA, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Denying Petitioner’s Request for Authorization
`to File Motion to Submit Supplemental Information
`37 C.F.R. § 42.123(b)
`
`
`
`
`
`
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`On November 18, 2021, Judges Franklin, Cotta, and Kaiser held a
`conference call with counsel for both parties to discuss Petitioner’s email
`request for authorization to file a motion to submit supplemental
`information. A partial transcript of the conference call was made by a court
`reporter, and that transcript will be entered in the record of this proceeding
`in due course. For the reasons discussed below, we deny Petitioner’s
`request.
`
`
`PETITIONER’S REQUEST
`Petitioner challenges claims 1–8 of U.S. Patent No. 10,716,793 on
`grounds that rely on, inter alia, Exhibits 1007 and 1008, which Petitioner
`asserts are prior art to the ’793 patent. Paper 2, 30–68. In its Response to
`the Petition, Patent Owner argues that Petitioner has not proven that
`Exhibits 1007 and 1008 are prior art because Petitioner has not shown that
`they were publicly accessible at an early enough date. Paper 29, 11–18. In
`particular, Patent Owner argues that Petitioner has not shown that
`Exhibits 1007 and 1008 were received, catalogued, and indexed sufficiently
`by a library to show that a person of ordinary skill in the art could have
`located them. Id. During the conference call, Petitioner identified the
`information it would like to submit as supplemental information: date-
`stamped copies of the documents in Exhibits 1007, 1008, and 1010 allegedly
`showing that, contrary to Patent Owner’s arguments, those exhibits were
`publicly accessible.
`
`
`2
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`
`ANALYSIS
`It has been more than one month since we instituted trial in the
`present proceeding. Accordingly, any motion to submit supplemental
`information that Petitioner might file at this point would be governed by
`Rule 42.123(b). That rule provides that, when “[a] party seek[s] to submit
`supplemental information more than one month after the trial is instituted,”
`that party’s motion “must show why the supplemental information
`reasonably could not have been obtained earlier,” as well as “that
`consideration of the supplemental information would be in the interests-of-
`justice.” 37 C.F.R. § 42.123(b).
`During the conference call, Petitioner argued that, at the time it
`prepared and filed the Petition, the libraries from which these exhibits could
`be obtained were closed due to the COVID-19 pandemic. Petitioner argued
`that, at that time, it was able to obtain only electronic copies of these
`exhibits lacking some of the indicia of library receipt and indexing that
`might have appeared on paper copies (and that allegedly do appear on the
`versions of these exhibits Petitioner seeks to submit as supplemental
`information). During the conference call, Petitioner stated that the
`university libraries from which it obtained the copies of these exhibits that
`accompanied the Petition did not reopen until the beginning of the present
`academic year in the autumn of 2021.
`Even assuming that Petitioner could prove all the facts it alleged
`during the conference call, we still are not persuaded that Petitioner could
`make a sufficient case for us to grant a motion to submit supplemental
`information under Rule 42.123(b). First, although there is some uncertainty
`surrounding the precise meaning of “the beginning of the academic year,”
`that phrase clearly does not stretch far enough to cover Petitioner’s failure to
`
`3
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`obtain the information it seeks to submit until after Patent Owner filed its
`Response on November 10, 2021. This is demonstrated nowhere more
`clearly than in the testimony of Sylvia Hall-Ellis, Ph.D., Petitioner’s
`declarant, who stated that “[t]he institutions that [she] would have gone to to
`get a date-stamped . . . copy of [the alleged prior art]” generally “reopened
`to the public on a limited basis to faculty and staff around the 1st of June and
`to the public in general in mid-August.” Ex. 2043, 252:15–23. The
`evidence thus supports Petitioner’s ability to have obtained this information
`at nearly any time since our institution of trial on August 11, 2021, and
`possibly even before that. Indeed, during the conference call with the
`parties, Petitioner did not allege otherwise. Under these circumstances,
`Petitioner would not be able to demonstrate persuasively in a motion that
`“the supplemental information reasonably could not have been obtained
`earlier,” as required by Rule 42.123(b).
`Second, even assuming Petitioner could not reasonably have obtained
`date-stamped copies of Exhibits 1007, 1008, and 1010 from the particular
`libraries where it eventually obtained them at any time before it did so,
`Petitioner may well have been able to obtain date-stamped copies from other
`libraries. Dr. Ellis testified that, in searching for date-stamped versions of
`Exhibits 1007, 1008, and 1010, she contacted only a small number of the
`libraries that carried the journals from which those exhibits came. Ex. 1036
`¶¶ 54 (Ex. 1010 available from 82 libraries), 65 (Ex. 1008 available
`from 1,168 libraries), 74 (Ex. 1007 available from 282 libraries); Ex. 2043,
`50:1–51:4 (Dr. Ellis testifying that she contacted three libraries of the 82 that
`carried the journal from which Exhibit 1010 was taken), 197:9–199:4
`(Dr. Ellis testifying that she contacted three libraries of the 1,168 that carried
`the journal from which Exhibit 1008 was taken). The small sample of
`
`4
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`libraries contacted by Petitioner’s declarant further supports a conclusion
`that Petitioner would not be able to demonstrate that “the supplemental
`information reasonably could not have been obtained earlier,” as required by
`Rule 42.123(b).
`For at least the foregoing reasons, Petitioner would be unable to meet
`its burden to show that the supplemental information it seeks to submit
`reasonably could have been obtained earlier. Thus, any motion Petitioner
`might file to submit this supplemental information would be futile.
`Accordingly, we deny Petitioner’s request for authorization to file such a
`motion.
`
`
`REPLY EVIDENCE
`In the course of the discussion during the conference call, Petitioner
`requested guidance regarding whether it could properly submit as reply
`evidence the same information it seeks to submit as supplemental
`information. We note that our rules and Consolidated Trial Practice Guide
`govern the proper scope of a Petitioner’s Reply to a Patent Owner’s
`Response to a Petition and any accompanying rebuttal evidence submitted in
`support of a reply. 37 C.F.R. § 42.23; Patent Trial and Appeal Board
`Consolidated Trial Practice Guide (Nov. 2019), at 73–75, available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. We take no
`position on the degree to which any evidence Petitioner might seek to file
`along with its Reply may or may not comply with this governing authority.
`
`It is
`ORDERED that Petitioner’s request for authorization to file a motion
`to submit supplemental information is denied.
`
`5
`
`
`
`IPR2021-00406
`Patent 10,716,793 B2
`For PETITIONER:
`
`Ivor R. Elrifi
`Erik B. Milch
`Deepa Kannappan
`Sanya Sukduang
`COOLEY LLP
`ielrifi@cooley.com
`emilch@cooley.com
`ssukduang@cooley.com
`
`For PATENT OWNER:
`
`Stephen B. Maebius
`George Quillin
`Jason N. Mock
`FOLEY & LARDNER LLP
`smaebius@foley.com
`gquillin@foley.com
`jmock@foley.com
`
`Shaun R. Snader
`UNITED THERAPEUTICS CORP.
`ssnader@unither.com
`
`Douglas Carsten
`April E. Weisbruch
`Judy Mohr, Ph.D.
`MCDERMOTT WILL & EMERY LLP
`dcarsten@mwe.com
`
`
`
`6
`
`
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