UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
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`Cyanotech Corporation
`Petitioner
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`v.
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`The Board of Trustees of the University of Illinois
`Patent Owner
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`_______________________
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`IPR2013-00401
`Case:
`Patent No.: 5,527,533
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`_______________________
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`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`_______________________
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`PATENT OWNER’S
`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71
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`Patent owner The Board of Trustees of the University of Illinois (“Patent
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`Owner”) respectfully submits this Request for Rehearing of the Board’s grant of
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`petitions IPR2013-00401 and IPR2013-00402 filed by Cyanotech Corporation
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`(“Petitioner”).
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`Patent Owner’s Preliminary Response focused on a singular procedural
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`issue—the statutory prohibition barring a party from filing a petition for inter
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`partes review after that party has “filed” a civil action challenging the validity of
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`that patent in federal court. 35 U.S.C. § 315(a)(1). The December 19, 2013
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`Decision concluded that Petitioner’s previously filed civil action in the United
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`States District Court, District of Hawaii, did not bar the petitions at issue. The
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`Decision based this ruling on federal court decisions addressing different principles
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`and statutes, and certain excerpts of legislative history. Patent Owner respectfully
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`requests reconsideration of this ruling.
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`First, the language of the statute is clear on its face, and the Decision did not
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`identify any reason for ignoring the clear requirements of the governing statute.
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`Bd. of Governors of Fed. Res. Sys. v. Dimension Fin. Corp., 474 U.S. 361, 368
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`(1986) (“If the statute is clear and unambiguous that is the end of the matter, for
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`the court, as well as the agency, must give effect to the unambiguously expressed
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`intent of Congress.”) (quoting Chevron U.S.A. Inc. v. Natural Res. Def. Council,
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`Inc., 467 U.S. 837, 842–43 (1984)). Further, it is error to consider the legislative
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`history of a statute before determining whether the wording of that statue is
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`ambiguous. United States v. Gonzalez, 520 U.S. 1, 6 (1997) (“Because the
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`language of § 315(a)(1) is clear, “there is no reason to resort to legislative
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`history.”). While the Board may believe the statute should have been written
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`differently, that is an issue for Congress. And as discussed in Patent Owner’s
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`Preliminary Response, Congress has demonstrated the ability to clearly articulate
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`when more than the mere filing of an action is required. (Prelim. Resp. at 6–8.)
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`Second, while the Decision correctly quotes the cited cases, none of those
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`cases concerned the statute at issue (or any equivalent statute). Instead, those cases
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`concerned whether plaintiffs had satisfied the statute of limitation (or other
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`administrative time limits for filing) when they had voluntarily dismissed
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`previously-filed action that was within the statute of limitations (or would have
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`affected the time limits for filing the subsequent action). Those cases are not
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`relevant to the § 315(a)(1). While §315(b) serves as a statue of limitations for the
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`availability of the IPR process (one year after the patent owner has filed an
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`infringement action), § 315(a)(1) does not. (See Prelim. Resp. at 14–15.) Section
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`315(a) simply sets forth a clear and specific prerequisite for the availability of an
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`administrative tribunal as an alternative to the federal court system, and there is
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`nothing in § 315(a)(1) the statute that requires either adjudication on the merits, or
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`co-pendency, of the previously-filed action. In addition, Patent Owner respectfully
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`submits that the correct inquiry is one of statutory interpretation, and the cases
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`cited in the Decision do not address the established process for interpreting statutes
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`or the words of the statute at issue.1
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`1 The last case cited in the Decision, Univ. of Pittsburgh v. Varian Med. Sys.,
`Inc., 569 F.3d 1328, 1333 (Fed. Cir. 2009), addresses the issue of res judicata and
`is also inapposite. That decision concerns Article III jurisdiction. It does not
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`Third, Patent Owner’s interpretation of the statute is wholly consistent with
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`the legislative history of the statute. (See Prelim. Resp. at 9–10 (citing legislative
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`history specific to § 315(a)).) Patent Owner’s interpretation does not preclude
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`parties from seeking adjudicative at the administrative tribunal as a general matter.
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`(See Decision at 11 (“That interpretation would frustrate the Congressional intent
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`of creating an adjudicative process as an alternative to civil litigation, and would
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`lead to the unjustified scenario where a party could challenge a patent in civil
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`litigation but not in inter partes review.”) But the statute is specifically designed
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`to close the door to the IPR process in the situation where a party has filed an
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`action in federal court. By filing in federal court, the party has made its choice of
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`forum. (See id. (“That interpretation would frustrate the Congressional intent of
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`creating an adjudicative process as an alternative to civil litigation, and would lead
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`to the unjustified scenario where a party could challenge a patent in civil litigation
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`but not in inter partes review. Under § 315(a), parties have a choice of forum to
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`challenge the invalidity of a patent.”).) Patent Owner’s interpretation leaves that
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`address § 315(a)(1), and is irrelevant to that statute, which limits the availability of
`an administrative tribunal as an alternative to the federal court system.
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`Further, the same decisions notes that whether or not the jurisdictional defect
`is “curable” is an important consideration—here the sovereign immunity defect is
`not curable. See id. (“[A] a dismissal for lack of standing should generally be
`without prejudice, particularly when the defect is curable”). It is presumably for
`this reason that federal courts have found dismissals due to sovereign immunity to
`be with prejudice. (See Prelim. Resp. at 12–13.)
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`choice of forum entirely intact, and is in harmony with the spirit and legislative
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`history of § 315(a)(1).
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`Fourth, the Hawaii Action was not simply dismissed without prejudice—it
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`was dismissed “without prejudice to Cyanotech bringing its claims in the pending
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`parallel action in the U.S. District Court for the Middle District of Florida.” (See
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`Prelim. Resp. at 8 n.4.) It is not correct that the District of Hawaii ruling was “a
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`nullity and [left] the parties [] in the same legal position as if the civil action had
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`never been filed.”
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`For these reasons, which are more thoroughly advanced in Patent Owner’s
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`Preliminary Response, Patent Owner respectfully requests rehearing of the
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`Decision, and a ruling that the petitions at issue are barred by 35 U.S.C. §
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`315(a)(1).
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`Respectfully submitted,
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`s/ Mark D. Schuman
`Mark D. Schuman (Lead Counsel)
`Registration No. 31,197
`CARLSON CASPERS
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Telephone: (612) 436-9600
`Facsimile: (612) 436-9650
`mschuman@carlsoncaspers.com
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`Counsel for Patent Owner The Board of
`Trustees of the University of Illinois
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`Respectfully submitted,
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`Dated: January 2, 2014.
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 2,
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`2014, a true and correct copy of the foregoing Patent Owners Request for
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`Rehearing Under 37 C.F.R. § 42.71 was served via electronic mail upon the
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`following:
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`Joseph A. Rhoa (Lead Counsel)
`Registration No. 37,515
`NIXON & VANDERHYE P.C.
`901 North Glebe Road, 11th Floor
`Arlington, VA 22203-1808
`Telephone: (703) 816-4043
`Email: jar@nixonvan.com
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`George E. Darby (Back-up Counsel)
`PARADISE PATENT SERVICES, INC.
`95 – 1045 Alakaina St.
`Mililani, HI 96789
`Telephone: (808) 626-1300
`Email: cyan@teleport-asia.com
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`Counsel for Petitioner Cyanotech Corporation, including
`its subsidiary, Nutrex Hawaii, Inc.
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`s/ Mark D. Schuman
`Mark D. Schuman (Lead Counsel)
`Registration No. 31,197
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