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