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`571-272-7822
`Date Entered: May 1, 2014
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`
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`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
`____________
`
`Cases IPR2013-00401 and IPR2013-00404 (consolidated)
`Patent 5,527,533
`____________
`
`
`
`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37C.F.R. § 42.5
`
`
`
`
`Cases IPR2013-00401, -00404
`Patent 5,527,533
`
`
`A conference call was conducted on April 30, 2014 to discuss (a) the
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`University’s request for authorization to file a motion to submit supplemental
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`information, and (b) Cyanotech’s request for clarification regarding reply evidence.
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`A. The University’s request
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`The University seeks to file documents that Cyanotech produced to the
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`University during the course of discovery, in a related case, months before the
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`University’s Patent Owner Response was filed, but that the University became
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`aware of only after filing its Response. The University explains that the
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`documents formed part of a production in December 2013 that included
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`approximately 100,000 to 200,000 pages. Cyanotech does not dispute the size of
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`the production but says that the documents were produced in October 2013. The
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`University contends that the documents are literature distributed by Cyanotech in
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`which Cyanotech states that spectroscopy is not a reliable method for detecting
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`astaxanthin. The University argues that these documents are relevant to this
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`proceeding because some of the prior art Cyanotech relies upon states that
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`astaxanthin was detected using spectroscopy. Cyanotech argues that it would be
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`prejudiced by the late submission of this information because it is about to conduct
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`cross-examination of the University’s technical expert, and because its Reply to the
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`Patent Owner Response is due May 21, 2014.
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`We authorized the University to file a motion to submit supplemental
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`information by May 2, 2014 and for Cyanotech to file an opposition by
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`May 6, 2014. We reminded the University that its motion must comply with the
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`requirements of 37 C.F.R. §§ 42.20 and 42.123. In particular, the University must
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`show that it is entitled to the relief requested and that consideration of the
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`supplemental information is in the interests of justice. The motion and the
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`opposition are each limited to five pages. No reply by the University is authorized.
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`
`
`2
`
`
`
`Cases IPR2013-00401, -00404
`Patent 5,527,533
`
`The parties agreed, with our approval, that Cyanotech may question the
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`University’s technical witness about the supplemental documents during
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`deposition, but that such testimony will be excluded from this proceeding if the
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`motion is not granted.
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`B. Cyanotech’s request
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`Cyanotech asked whether its needs permission to file a declaration with its
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`Reply that is responsive to arguments made in the University’s Patent Owner
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`Response, and whether it needs permission to file a complete transcript of the
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`University’s deposition of Dr. Schweigert. We explained that Cyanotech requires
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`permission for neither. We reminded Cyanotech that reply evidence must be
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`responsive, i.e., directly refuting response evidence, and not new evidence. As
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`to the deposition transcript, we reminded the parties that the proponent of
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`deposition evidence is required to file a complete transcript of the deposition.
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`37 C.F.R. § 42.53(f)(7). The parties agreed that Cyanotech will file a complete
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`transcript of Dr. Schweigert’s deposition.
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`Accordingly, it is
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`ORDERED that the University is authorized to file a motion to submit
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`supplemental information by May 2, 2014;
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`FURTHER ORDERED that Cyanotech is authorized to file an opposition to
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`the motion by May 6, 2014;
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`FURTHER ORDERED that the motion and the opposition are each limited
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`to five pages;
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`FURTHER ORDERED that the University is not authorized to file a reply;
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`and
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`
`
`3
`
`
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
`
`
`FURTHER ORDERED that Cyanotech shall file a complete transcript of the
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`deposition of Dr. Schweigert with its Reply to the Patent Owner Response, using a
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`new exhibit number.
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`
`
`For PETITIONER:
`
`Joseph A. Rhoa
`NIXON & VANDERHYE P.C.
`
`George E. Darby
`PARADISE PATENT SERVICES, INC.
`
`
`For PATENT OWNER:
`
`Mark D. Schuman
`Iain A. McIntyre
`Todd Werner
`CARLSON CASPERS
`
`
`
`
`
`4
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`