UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`Cyanotech Corporation
`Petitioner
`
`v.
`
`The Board of Trustees of the University of Illinois
`Patent Owner
`
`_______________________
`
`IPR2013-00401
`Case:
`Patent No.: 5,527,533
`_______________________
`
`
`
`
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`PURSUANT TO 37 C.F.R. § 42.63(e)
`
`Patent Owner, The Board of Trustees of the University of Illinois, submits
`
`
`
`
`
`the following List of Exhibits pursuant to 37 C.F.R. §42.63(e).
`
`Exhibit No.
`
`Description
`
`Complaint, Civ. No. 12-352, Dkt. No. 1 (District of Hawaii,
`June 20, 2012).
`
`
`
`UNIVERSITY
`Exhibit 20011
`(previously filed as
`an attachment to
`Patent Owner’s
`Preliminary
`Response, on
`October 2, 2013)
`
`1 Previously filed as an attachment to Patent Owner’s Preliminary Response
`(Doc. No. 15).
`
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`Cyanotech Corporation
`Petitioner
`
`v.
`
`The Board of Trustees of the University of Illinois
`Patent Owner
`
`_______________________
`
`IPR2013-00401
`Case:
`Patent No.: 5,527,533
`_______________________
`
`
`
`
`
`
`
`PATENT OWNER’S EXHIBIT LIST
`PURSUANT TO 37 C.F.R. § 42.63(e)
`
`Patent Owner, The Board of Trustees of the University of Illinois, submits
`
`
`
`
`
`the following List of Exhibits pursuant to 37 C.F.R. §42.63(e).
`
`Exhibit No.
`
`Description
`
`Complaint, Civ. No. 12-352, Dkt. No. 1 (District of Hawaii,
`June 20, 2012).
`
`
`
`UNIVERSITY
`Exhibit 20011
`(previously filed as
`an attachment to
`Patent Owner’s
`Preliminary
`Response, on
`October 2, 2013)
`
`1 Previously filed as an attachment to Patent Owner’s Preliminary Response
`(Doc. No. 15).
`
`
`
`Exhibit No.
`
`
`UNIVERSITY
`Exhibit 20022
`(previously filed as
`an attachment to
`Patent Owner’s
`Preliminary
`Response, on
`October 2, 2013)
`
`UNIVERSITY
`Exhibit 2003
`
`
`UNIVERSITY
`Exhibit 2004
`
`UNIVERSITY
`Exhibit 2005
`
`UNIVERSITY
`Exhibit 2006
`
`UNIVERSITY
`Exhibit 2007
`
`
`UNIVERSITY
`Exhibit 2008
`
`UNIVERSITY
`Exhibit 2009
`
`
`Description
`
`Decision entered September 13, 2013 by the Patent Trial
`and Appeal Board denying Inter Partes Review 37 C.F.R. §
`42.108 in Anova Foods, LLC v. Sandau, IPR2013-00114
`(No. 17).
`
`
`EXCERPTS from the Deposition of Florian J. Schweigert
`taken on March 12, 2014, in Patent Trial and Appeal Board
`Case IPR2013-00401.
`
`Cyanotech 2013 Annual Report.
`
`
`Curriculum Vitae of Shalesh Kaushal, M.D., Ph.D.
`
`List of Materials Considered by Shalesh Kaushal, M.D.,
`Ph.D.
`
`Chapter 6: “Metabolism of Carotenoids in Mammals,” by
`Florian J. Schweigert, Carotenoids Volume 3: Biosynthesis
`and Metabolism, 1998, pp. 249-284.
`
`8.7.1 Vitamin A, Food Chemistry, Third Edition, 1996, pp.
`545-552.
`
`Chapter 64 Fat-Soluble Vitamins Vitamins A, K, and E, by
`Robert Marcus and Ann M. Coulston, Goodman and
`Gilman’s The Pharmacological Basis of Therapeutics, 8th
`Edition, 1990, pp. 1553-1563.
`
`
`
`2 Previously filed as an attachment to Patent Owner’s Preliminary Response
`(Doc. No. 15).
`
`
`
`2
`
`
`
`Exhibit No.
`
`
`UNIVERSITY
`Exhibit 2010
`
`
`UNIVERSITY
`Exhibit 2011
`
`
`UNIVERSITY
`Exhibit 2012
`
`
`UNIVERSITY
`Exhibit 2013
`
`
`UNIVERSITY
`Exhibit 2014
`
`
`UNIVERSITY
`Exhibit 2015
`
`UNIVERSITY
`Exhibit 2016
`
`UNIVERSITY
`Exhibit 2017
`
`UNIVERSITY
`Exhibit 2018
`
`
`Description
`
`“Astaxanthin, a Carotenoid without Vitamin A Activity,
`Augments Antibody Responses in Cultures including T-
`helper Cell Clones and Suboptimal Doses of Antigen,”
`Jyonouchi, et al., The Journal of Nutrition, 1995, pp. 2483-
`2492.
`
`Cyanotech Corporation statement submitted to the UK
`Food Standards Agency (Cysewski Deposition Exhibit
`#51).
`
`“Occurrence, Distribution, and Absorption of Provitamins
`A,” by Thompson SY, Proceedings of the Nutrition Society,
`Volume 24(2), pp. 136-146, 1965.
`
`“Preliminary Identification of the Human Macular
`Pigment,” Richard A. Bone, et al., Vision Research,
`Volume 25, Issue 11, 1985, pp. 1531-1535.
`
`EXCERPTS from “The World’s Best Kept Health Secret
`Natural Astaxanthin,” by Bob Capelli with Dr. Gerald
`Cysewski (RA-112986) (Cysewski Deposition Exhibit
`#65).
`
`Expert Declaration of Shalesh Kaushal, M.D., Ph.D.
`
`About Macular Degeneration (ECF #93-3 Exhibit 2 to
`Plaintiffs’ Claim Construction Brief).
`
`About Age-Related Macular Degeneration (AMD) (ECF
`#93-4 Exhibit 3 to Plaintiffs’ Claim Construction Brief).
`
`Press Release “Nutrex Hawaii Hawaiian Astaxanthin
`Microalgae May be the Secret to Better Eye Health, Digital
`Journal, January 24, 2013 (VALENSA000416-420).
`
`
`
`
`3
`
`
`
`Exhibit No.
`
`
`UNIVERSITY
`Exhibit 2019
`
`UNIVERSITY
`Exhibit 2020
`
`UNIVERSITY
`Exhibit 2021
`
`
`UNIVERSITY
`Exhibit 2022
`
`
`UNIVERSITY
`Exhibit 2023
`
`
`UNIVERSITY
`Exhibit 2024
`
`UNIVERSITY
`Exhibit 2025
`
`
`UNIVERSITY
`Exhibit 2026
`
`
`UNIVERSITY
`Exhibit 2027
`
`UNIVERSITY
`Exhibit 2028
`
`
`Description
`
`A Special Interview with Dr. Gerald Cysewski by Dr.
`Joseph Mercola (VALENSA000352-376).
`
`“The World’s Strongest Antioxidant,” Nutrex Hawaii
`News, May 14, 2001 (VALENSA000100-103).
`
`“The Medical Research of Astaxanthin,” Cyanotech
`Corporation, 2010, p. 93 (VALENSA000036 and
`VALENSA000056).
`
`“Can You Say Asta·ZAN·thin? Amazing Natural
`Astaxanthin!” Nutrition News, 2006 (VALENSA000346-
`VALENSA000349).
`
`Amendment and Response, signed October 23, 1995, from
`the Prosecution File History for U.S. Patent No. 5,527,533
`(VALENSA000656-662).
`
`“Eyes and Astaxanthin,” Nutrex Hawaii presentation slide
`(VALENSA000266).
`
`“The Skinny on Astaxanthin – The King of Antioxidant,”
`from the website www.susansmithjones.com
`(VALENSA000433-439).
`
`EXCERPTS from “Natural Astaxanthin: King of the
`Carenoids,” by Bob Capelli with Dr. Gerald Cysewski
`(RA-108230) (Cysewski Deposition Exhibit #64).
`
`“Astaxanthin – A More Powerful eye Antioxidant,”
`www.mercola.com.
`
`Product Use and Trademark License between Valensa
`International and Futurebiotics, LLC, dated July 1, 2009
`(VALENSA002415)
`
`
`
`
`4
`
`
`
`Exhibit No.
`
`
`UNIVERSITY
`Exhibit 2029
`
`
`UNIVERSITY
`Exhibit 2030
`
`
`UNIVERSITY
`Exhibit 2031
`
`
`UNIVERSITY
`Exhibit 2032
`
`
`
`
`Description
`
`Product Use and Trademark License between Valensa
`International and Quality Supplements and Vitamins, Inc.
`dba Life Extension, dated September 21, 2009
`(VALENSA002424).
`
`Product Use and Trademark License between Valensa
`International and NOW Health Group, Inc., dated May 12,
`2010 (VALENSA002432).
`
`Amendment 1 to Valensa International Product Use and
`Trademark License between Valensa International and
`Swanson Health Products, Inc., dated July 30, 2009
`(VALENSA002449).
`
`Declaration of Mark O.M. Tso under 37 C.F.R. §1.132,
`signed May 19, 1995, Prosecution File History for U.S.
`Patent No. 5,527,533 (VALENSA000555-572).
`
`
`Dated: March 21, 2014.
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`Respectfully submitted,
`
`
`
`
`
`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
`
`Counsel for Patent Owner The Board of
`Trustees of the University of Illinois
`
`5
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on March 21,
`
`
`
`2014, a true and correct copy of the foregoing Patent Owner’s Exhibit List
`
`Pursuant to 37 C.F.R. § 42.63(e) was served via electronic mail upon the
`
`following:
`
`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
`
`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
`
`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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`6
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