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
`_______________________
`
`
`
`
`
`
`
`Declaration of Dr. Rudi Moerck In Support of Patent Owner’s Response to
`Petitioner’s Objections To Evidence Pursuant to 37 C.F.R. § 42.64(b)(2)
`
`
`
`
`
`
`
`I, Dr. Rudi Moerck, declare as follows:
`
`1.
`
`I am the President and Chief Executive Officer of U.S. Nutraceuticals
`
`dba Valensa International (“Valensa”). Valensa is an exclusive licensee to U.S.
`
`Patent No. 5,527,533 (“the Tso patent”), which is the subject of the above-
`
`identified Inter Partes Review. I offer this declaration in support of Patent
`
`Owner’s Response to Petitioner’s Objections To Evidence Pursuant to 37 C.F.R. §
`
`42.64. I have personal knowledge of the matters set forth herein, and if called
`
`upon would testify as follows.
`
`
`_______________________
`
`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
`_______________________
`
`
`
`
`
`
`
`Declaration of Dr. Rudi Moerck In Support of Patent Owner’s Response to
`Petitioner’s Objections To Evidence Pursuant to 37 C.F.R. § 42.64(b)(2)
`
`
`
`
`
`
`
`I, Dr. Rudi Moerck, declare as follows:
`
`1.
`
`I am the President and Chief Executive Officer of U.S. Nutraceuticals
`
`dba Valensa International (“Valensa”). Valensa is an exclusive licensee to U.S.
`
`Patent No. 5,527,533 (“the Tso patent”), which is the subject of the above-
`
`identified Inter Partes Review. I offer this declaration in support of Patent
`
`Owner’s Response to Petitioner’s Objections To Evidence Pursuant to 37 C.F.R. §
`
`42.64. I have personal knowledge of the matters set forth herein, and if called
`
`upon would testify as follows.
`
`
`
`2.
`
`I have been informed that in response to Petitioner’s March 28, 2014
`
`Objections to Patent Owner’s Evidence Pursuant to 37 C.F.R. § 42.64(b)(2), Patent
`
`Owner will be submitting the following documents:
`
`Exhibit No.
`
`
`UNIVERSITY
`Exhibit 2033
`
`
`UNIVERSITY
`Exhibit 2034
`
`
`UNIVERSITY
`Exhibit 2035
`
`
`UNIVERSITY
`Exhibit 2036
`
`
`
`
`Description
`
`Product Use and Trademark License between Valensa
`International and Futurebiotics, LLC, dated July 1, 2009
`(VALENSA002415)
`
`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).
`
`
`3.
`
`Each of the above-mentioned exhibits are true, authentic, and correct
`
`copies of licenses into which Valensa has entered related to the Tso patent.
`
`4.
`
`The above-mentioned exhibits were executed on the dates specified
`
`and written in each license agreement.
`
`5.
`
`Valensa keeps the above-mentioned exhibits in the course of its
`
`regularly conducted business activities.
`
`
`
`6.
`
`It is the regular practice of Valensa to enter into contracts such as the
`
`above-mentioned exhibits.
`
`7.
`
`University Exhibit 2033 (POX 2033) includes a license to the Tso
`
`patent, and ensures that Valensa receives financial compensation, in the form of
`
`sales of astaxanthin products, from its licensee’s use of the licensed patent rights.
`
`8.
`
`University Exhibit 2034 (POX 2034) includes a license to the Tso
`
`patent, and ensures that Valensa receives financial compensation, in the form of
`
`sales of astaxanthin products, from its licensee’s use of the licensed patent rights.
`
`9.
`
`University Exhibit 2035 (POX 2035) includes a license to the Tso
`
`patent, and ensures that Valensa receives financial compensation, in the form of
`
`sales of astaxanthin products, from its licensee’s use of the licensed patent rights.
`
`10. Attached hereto as University Exhibit 2036 (POX 2036) is a license to
`
`the Tso patent, and ensures that Valensa receives financial compensation, in the
`
`form of sales of astaxanthin products, from its licensee’s use of the licensed patent
`
`rights.
`
`11. University Exhibit 2027 (POX 2027) is a true and correct copy of an
`
`article by Dr. Mercola titled “Asthaxanthin: The Most Powerful Nutrient Ever
`
`Discovered for Eye Health” dated Nov. 23, 2010. Today I confirmed that this
`
`article, POX 2027, is still made publically available by Dr. Mercola through his
`
`company’s website at:
`
`
`
`http://articles.mercola.com/sites/articles/archive/2010/11/23/astaxanthin-the-eye-
`
`antioxidant-550-times-more-powerful-than-vitamin-e.aspx.
`
`12. University Exhibit 2025 (POX 2025) is a true and correct copy of an
`
`article posted on Dr. Susan Smith Jones’ webpage which relates to natural health
`
`supplements that is available at http://susansmithjones.com/book-‐page/skinny-‐
`
`astaxanthin-‐%E2%80%94-‐king-‐antioxidants.
`
`I declare, under penalty of perjury, that the foregoing is true and correct to the
`
`best of my knowledge.
`
`Dated: April 10, 2014
`
`
`
`
`
`
`
`
`Dr. Rudi Moerck
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April __,
`
`
`
`2014, a true and correct copy of the foregoing Declaration of Dr. Rudi Moerck In
`
`Support of Patent Owner’s Response to Petitioner’s Objections To Evidence
`
`Pursuant to 37 C.F.R. § 42.64(b)(2) 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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/Mark D. Schuman
`Mark D. Schuman (Lead Counsel)
`Registration No. 31,197
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
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