`Tel: 571-272-7822
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`Paper 41
`Entered: May 9, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CYANOTECH CORPORATION
`Petitioner
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`v.
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`THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS
`Patent Owner
`____________
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`Case IPR2013-00401
`Patent 5,527,533
`____________
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`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
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`SNEDDEN, Administrative Patent Judge.
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`DECISION
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`On Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. §§ 42.123(b)
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`Case IPR2013-00401
`Patent 5,527,533
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`We authorized Patent Owner to file a motion to submit supplemental
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`information, and we authorized Petitioner to file an opposition. Paper 38. Patent
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`Owner has filed its motion (Paper 39), and Petitioner has filed its opposition (Paper
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`40). For the reasons given below, Patent Owner’s motion is granted.
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`Under 37 C.F.R. § 42.123(b), a motion to submit supplemental information
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`must show why the supplemental information reasonably could not have been
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`obtained earlier, and that consideration of the supplemental information would be
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`in the interests of justice. As stated in 37 C.F.R. § 42.1(b), trial rules are construed
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`to secure the just, speedy, and inexpensive resolution of every proceeding.
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`Patent Owner seeks to submit two supplemental documents—a pair of
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`emails with attachments containing statements by Petitioner related to the
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`reliability of spectrophotometric analysis for determining the presence of
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`astaxanthin. Paper 39, 2–3. Patent Owner directs our attention to the following
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`statements made in the email attachments:
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`(1) ―The problem with the Spectrophotometric assay method is that, in
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`addition to astaxanthin, other carotenoids such as lutein, canthaxanthin,
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`and beta carotene are falsely included as astaxanthin in the results. Of
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`even greater concern, chlorophyll and degradation products of
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`astaxanthin without health benefits (such as astacene) will also be
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`falsely included as asxatanthin in the results. . . . Purchasing astaxanthin
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`from a supplier that uses Spectrophotometric analysis means that you
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`can’t be sure if your astaxanthin is really astaxanthin.‖ Id., Ex. A at
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`RA015049–49.
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`(2) ―The only valid way to accurately measure astaxanthin is the HPLC
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`method used by Cyanotech.‖ Id., Ex. A at RA015049–49.
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`(3) ―[A] UV spectrophotometric analysis [ ] can falsely include other
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`Case IPR2013-00401
`Patent 5,527,533
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`carotenoids and even chlorophyll and astacene (a breakdown bi-product
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`of astaxanthin that has no health benefits) as astaxanthin.‖ Id., Ex. B at
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`RA023192–95.
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`Patent Owner contends that the information could not have been reasonably
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`obtained earlier because the two documents at issue were part of a production
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`consisting of over 100,000 pages. Id., 3–4. Patent Owner further contends that
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`consideration of the supplemental information would be in the interests of justice,
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`because the information includes Petitioner’s own statements concerning issues
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`under consideration in this inter partes review. Id., 1.
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`Petitioner argues that the documents in question had been produced to Patent
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`Owner several months before Patent Owner filed its Response, and that Patent
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`Owner’s failure to submit them with the Response is no more than attorney
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`negligence. Paper 40, 1–3. Petitioner argues it will suffer prejudice in that
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`Petitioner’s time to prepare for the deposition of Patent Owner’s witness was
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`reduced by two-thirds and its time to locate a rebuttal expert and to prepare its
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`Reply have been reduced by half. Id., 3. Petitioner also argues that Patent
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`Owner’s scientific argument is baseless. Id., 3–4.
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`Upon consideration of the documents and the parties’ arguments, we
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`conclude that the interests of justice are served by permitting entry of the
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`supplemental information. The documents are Petitioner’s own statements and
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`relate directly to an argument Patent Owner has advanced in its Response: whether
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`Grangaud correctly identified the substance he administered as being astaxanthin.
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`Paper 32, 2. We deem any prejudice to Petitioner to be negligible. Petitioner will
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`have an opportunity to cross-examine Patent Owner’s witnesses about the
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`supplemental documents and may introduce direct testimonial evidence with its
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`Reply that is responsive to the supplemental documents.
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`Case IPR2013-00401
`Patent 5,527,533
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`For these reasons, it is
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`ORDERED that Patent Owner’s motion to submit supplemental information
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`is granted; and
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`FURTHER ORDERED that Patent Owner shall file the two supplemental
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`documents as separate, numbered exhibits.
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`PETITIONER:
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`Joseph A. Rhoa
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
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`George E. Darby
`PARADISE PATENT SERVICES, INC.
`cyan@teleport-asia.com
`gdarby@kanikapilarecords.com
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`PATENT OWNER:
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`Mark Schuman
`Iain McIntyre
`Todd Werner
`CARLSON CASPERS
`mschuman@carlsoncaspers.com
`imcintyre@carlsoncaspers.com
`twerner@carlsoncaspers.com
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`