Case IPR2013-00401
`Patent No. 5,527,533
`
`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
`____________
`
`
`Case IPR2013-004011
`
`Patent 5,527,533
`
`____________
`
`
`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`____________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`____________
`
`
`Submitted: May 6, 2014
`
`
`1 Consolidated with Case IPR2013-00404
`
`
`
`Patent No. 5,527,533
`
`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
`____________
`
`
`Case IPR2013-004011
`
`Patent 5,527,533
`
`____________
`
`
`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`____________
`
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO SUBMIT
`SUPPLEMENTAL INFORMATION
`
`____________
`
`
`Submitted: May 6, 2014
`
`
`1 Consolidated with Case IPR2013-00404
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s
`Motion to Submit Supplemental Information
`
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
`
`I.
`
`INTRODUCTION
`
`Patent Owner (PO) admits that the documents it wishes to belatedly submit
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`were in its possession since at least October 29, 2013, that it was fully aware of the
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`documents and their significance by the week of March 24, 2014, and that it
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`delayed yet another month, until April 21, 2014, to notify Petitioner of its intent to
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`use these documents. See PO’s Motion 4, fns. 1-3, admitting these facts and that
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`its previous claim to the Board of a December 2013 document receipt date was
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`inaccurate. Patent Owner has proffered no meaningful excuse for these delays.
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`Additionally, the documents at issue are essentially meaningless. PO argues
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`that the analytical method used in Grangaud to establish the presence of
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`astaxanthin in the shrimp oil was not as precise as today’s analytical standards and
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`thus that Grangaud’s shrimp oil may not have contained astaxanthin. PO’s point is
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`wrong and easily disproven. Petitioner’s marketing materials newly referenced by
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`PO are referring to UV absorbance assays and are therefore irrelevant because
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`astaxanthin absorbs in the visible band as shown in Grangaud. Moroever, the
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`broad single maximum absorption spectrogram of astaxanthin was independently
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`confirmed by numerous earlier and subsequent researchers including Nobel
`
`Laureate, George Wald, to be the same as Grangaud reported. The irrefutable
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`accumulation of astaxanthin in the shrimp species from which Grangaud extracted
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`astaxanthin has also been confirmed by numerous subsequent researchers.
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`
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`1
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`
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`Petitioner’s Opposition to Patent Owner’s
`Motion to Submit Supplemental Information
`
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
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`Baseless arguments are not in the “interests of justice.”
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`II. LEGAL STANDARDS
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`Under Rule 123(b), the proponent “must show why the supplemental
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`information reasonably could not have been obtained earlier, and that consideration
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`of the supplemental information would be in the interests of justice.” The
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`“interests-of-justice” standard is higher than “good cause.” 77 Fed. Reg. 48622.
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`PO’s failure to read documents in its possession does not qualify as “good cause.”
`
`Hahan v. Wong, 892 F.2d 1028, 1034 (Fed. Cir. 1989); see also Huston v. Ladner,
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`973 F.2d 1564 (Fed. Cir. 1992) (“attorney negligence” is not “good cause”; “good
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`cause” requires proof that a late submitted declaration could not have been
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`obtained and presented earlier). See also Illumina, Inc. v. Columbia Univ.,
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`IPR2013-00011, Paper 87 at 5 (denying late submission because of failure to meet
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`Rule 123(b) requirement).
`
`III. DISCUSSION
`
`A.
`Patent Owner Was Not Reasonably Diligent In Seeking or
`Submitting its Late Submission
`
`PO is required to show it could not have reasonably obtained the late
`
`
`
`submission documents at an earlier time. Here, PO concedes it failed to read
`
`documents produced to it on October 29, 2013 for almost five months and then
`
`delayed another month in notifying Petitioner of its intention to use them.
`
`PO does not explain why it made no effort to read the documents prior to the
`
`
`
`2
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`
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`Petitioner’s Opposition to Patent Owner’s
`Motion to Submit Supplemental Information
`
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
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`week of March 24 other than to assert that they were part of a 100,000 page
`
`production, failing to note that the documents at issue were in the first 2,300 and
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`5,600 documents produced, respectively. PO also fails to note that the documents
`
`were produced in electronic, text searchable form and that depositions in the
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`parallel infringement litigation, including the inventor’s deposition, commenced on
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`January 23, 2014. Yet, PO apparently waited until a March 27, 2014 deposition to
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`finally review the documents it had for 5 months and then waited until April 21,
`
`2014 to notify Petitioner and the Board of its intentions to submit these documents.
`
`Pat. Owner’s Mot. 4, fns. 1-3.
`
`As a result of these delays, Petitioner’s time to prepare for the deposition of
`
`PO’s witness was reduced by two-thirds and its time to locate a rebuttal expert and
`
`to prepare its Reply have been reduced by half. PO has offered no excuse for its
`
`prejudicial and apparently premeditated delay. For this reason alone, Patent
`
`Owner’s motion should be denied.
`
`Patent Owner’s Scientific Argument is Baseless.
`
`B.
`
`PO asserts that the documents at issue, comprised of Petitioner’s marketing
`
`materials that refer to UV absorbance assays, support an argument that “the
`
`spectrophotometric analysis used by Grangaud is an unreliable means for
`
`determining the presence of astaxanthin.” PO’s Mot. at 3; and PO’s Resp., Paper
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`No. 32, at pp. 27-31. This point is irrelevant. For identifying astaxantin purity,
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`3
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`Petitioner’s Opposition to Patent Owner’s
`Motion to Submit Supplemental Information
`
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
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`UV spectra are not applicable in Grangaud because astaxanthin absorbs in the
`
`visible band. In 1951, Grangaud’s methods were state of the art and later research
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`confirmed that Grangaud was correct that he had purified astaxanthin. Sergiu
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`Amarie et al., Excited state dynamics of the astaxanthin radical cation, 373(1-2)
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`Chemical Physics 8, 10 (2010) (Figs 1(A) and 2 (upper graph) showing astaxanthin
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`absorption spectra in four different solvents, all of which show a smooth curve
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`with a single, broad maximum).
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`Indeed, Grangaud’s and Massonet’s later journal articles (Cyan Exs. 1008 –
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`1018) confirmed that astaxanthin is the active ingredient in shrimp oil. And a
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`concurrent journal article, Marie-Louise Josien et al., Infrared Spectroscopy of
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`Compounds having Biological Interest, 73 J. American Chemical Soc. 4445-49
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`(Sept. 1951), shows that absorption spectroscopy was state of the art when
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`Grangaud published his thesis. Even pre-1951 absorption spectrograms, prepared
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`using various solvents, report the same, single maximum, broad absorption band
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`that Grangaud reported. See Josef Tischer, 239(4-6) Z. Physiol. Chem. 257, 257-
`
`58 (1936)); George Wald, The Photoreceptor Fucntion of the Carotenoids and
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`Vitamins A, Vitamins & Hormones (1943), vol. 1, 195, 213 (1943) (Fig.3, upper
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`graph). Modern research has also confirmed that astaxanthin (in free, monoester,
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`and diester forms) is the predominant carotenoid in the carapace of A. foliacea (the
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`carapace area includes the cephalothorax, the source of Grangaud’s shrimp oil).
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`4
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`Petitioner’s Opposition to Patent Owner’s
`Motion to Submit Supplemental Information
`
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`
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`Case IPR2013-00401
`Patent No. 5,527,533
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`See Juan Fernandez & Justino Burgos, Carotenoid Pigments in the Flesh and
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`Carapace of Artisaeomorpha Foliacea and Heterocarpus Dorsalis, 69B(3) Comp.
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`Biochem. Physiol. 559, 569-74 (1981) (section entitled “Astaxanthin free, mono,
`
`and diester”). Thus, PO’s argument that astaxanthin is somehow not present in
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`shrimp oil is baseless.
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`C.
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`Patent Owner Fails to Meet the “Interests of Justice” Standard
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`First, as explained above, PO was not “fully diligent” as required by 77 Fed.
`
`Reg. 48622. Second, PO’s late submission has unfairly prejudiced Petitioner as
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`explained above. Third, the documents for proposed submission by PO relate to a
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`baseless argument given that, as explained above, the presence of astaxanthin in
`
`shrimp oil used has been conclusively and repeatedly established by many
`
`researchers over the years as has the absorption spectra for astaxanthin.
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`For each of the reasons set forth above, it is respectfully submitted that the
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`motion should be denied.
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`Respectfully submitted,
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`Counsel for Petitioner Cyanotech
`Corporation
`
`5
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`Case IPR2013-00401
`Patent No. 5,527,533
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`CERTIFICATE OF SERVICE
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`I hereby certify service of the foregoing Petitioner’s Opposition to Patent
`
`Owner’s Motion to Submit Supplemental Information to the following counsel for
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`patent owner on May 6, 2014 via email (pursuant to agreement between the
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`parties):
`
`Mark D. Schuman
`Iain A. McIntrye
`Todd S. Werner
`Peter M. Kohlhepp
`CARLSON CASPERS
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`(mschuman@carlsoncaspers.com)
`(imcintyre@carlsoncaspers.com)
`(twerner@carlsoncaspers.com)
`(pkohlhepp@carlsoncaspers.com)
`
`
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
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