by Dennis Crouch

The Supreme Court has requested a response to a pending petition for certiorari in United Therapeutics Corp. v. Liquidia Technologies, Inc., indicating that at least one justice sees potential merit in the case. The petition challenges the Federal Circuit’s application of the statutory limits on the Patent Trial and Appeal Board’s (PTAB) authority in inter partes review (IPR) proceedings.  I believe that there is a potential that the Court will issue a grant-vacate-remand (GVR) order, asking the Federal Circuit to reconsider its deferential decision based upon Loper Bright.

UTC owns the patent at issue, U.S. Patent No. 10,716,793, which is directed to methods of treating pulmonary hypertension using treprostinil. In the petition for certiorari, UTC argues that the Federal Circuit erred by deferring to the PTAB’s discretion instead of conducting a de novo review of the PTAB’s compliance with 35 U.S.C. § 312. This provision requires IPR petitions to identify “with particularity” the grounds and evidence supporting the challenge to each patent claim.

UTC contends that the PTAB violated § 312 by relying on grounds and printed publications not raised in Liquidia’s initial IPR petition. The Federal Circuit affirmed the PTAB’s decision, holding that it would defer to the PTAB’s discretion as long as the new arguments were “not inconsistent with” the initial petition.

However, UTC argues that this deferential standard contradicts the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, which held that the petitioner’s contentions, not the Director’s discretion, define the scope of the IPR proceeding “all the way from institution through to conclusion.” 138 S. Ct. 1348 (2018).

Moreover, UTC contends that the Federal Circuit’s inconsistent application of the standard of review has created an intra-circuit split. Some panels apply de novo review, recognizing the statutory limits on the PTAB’s authority, while others defer to the PTAB’s discretion. Compare, the Federal Circuit’s decision in this case against, cases such as In re NuVasive, Inc., 841 F.3d 966, 970 (Fed. Cir. 2016), which applied de novo review to determine whether a ground relied upon by the PTAB was “new.”  See also, Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374 (Fed. Cir. 2018) (“[T]he Board has discretion to determine whether a petition for inter partes review identified the specific evidence relied on in a reply and when a reply contention crosses the line from the responsive to the new.”).

In a cert petition filed before Loper Bright, UTC also raises the question of whether Chevron deference should be overruled — the question is now moot because the Supreme Court has already overruled Chevron and held that courts must exercise independent judgment in determining whether an agency has acted within its statutory authority.  However, it is unclear exactly how the lack of Chevron deference would impact the outcome here because it was not directly applied by the Federal Circuit.

UTC has a powerhouse team, including Douglas Carsten (MWE) and William Jay (Goodwin).  Supreme Court has given Liquidia until August 12 to respond and the case is set to be discussed by the court at the “long conference” when the court next reconvenes September 30, 2024.