`Tel: 571-272-7822
`
`
`
`
`Paper 41
`Entered: May 9, 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
`____________
`
`Case IPR2013-00401
`Patent 5,527,533
`____________
`
`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`DECISION
`
`On Patent Owner’s Motion to Submit Supplemental Information
`37 C.F.R. §§ 42.123(b)
`
`
`
`
`
`Case IPR2013-00401
`Patent 5,527,533
`
`
`We authorized Patent Owner to file a motion to submit supplemental
`
`information, and we authorized Petitioner to file an opposition. Paper 38. Patent
`
`Owner has filed its motion (Paper 39), and Petitioner has filed its opposition (Paper
`
`40). For the reasons given below, Patent Owner’s motion is granted.
`
`Under 37 C.F.R. § 42.123(b), a motion to submit supplemental information
`
`must show why the supplemental information reasonably could not have been
`
`obtained earlier, and that consideration of the supplemental information would be
`
`in the interests of justice. As stated in 37 C.F.R. § 42.1(b), trial rules are construed
`
`to secure the just, speedy, and inexpensive resolution of every proceeding.
`
`Patent Owner seeks to submit two supplemental documents—a pair of
`
`emails with attachments containing statements by Petitioner related to the
`
`reliability of spectrophotometric analysis for determining the presence of
`
`astaxanthin. Paper 39, 2–3. Patent Owner directs our attention to the following
`
`statements made in the email attachments:
`
`(1) ―The problem with the Spectrophotometric assay method is that, in
`
`addition to astaxanthin, other carotenoids such as lutein, canthaxanthin,
`
`and beta carotene are falsely included as astaxanthin in the results. Of
`
`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
`
`from a supplier that uses Spectrophotometric analysis means that you
`
`can’t be sure if your astaxanthin is really astaxanthin.‖ Id., Ex. A at
`
`RA015049–49.
`
`(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.
`
`(3) ―[A] UV spectrophotometric analysis [ ] can falsely include other
`
`
`
`Case IPR2013-00401
`Patent 5,527,533
`
`
`carotenoids and even chlorophyll and astacene (a breakdown bi-product
`
`of astaxanthin that has no health benefits) as astaxanthin.‖ Id., Ex. B at
`
`RA023192–95.
`
`Patent Owner contends that the information could not have been reasonably
`
`obtained earlier because the two documents at issue were part of a production
`
`consisting of over 100,000 pages. Id., 3–4. Patent Owner further contends that
`
`consideration of the supplemental information would be in the interests of justice,
`
`because the information includes Petitioner’s own statements concerning issues
`
`under consideration in this inter partes review. Id., 1.
`
`Petitioner argues that the documents in question had been produced to Patent
`
`Owner several months before Patent Owner filed its Response, and that Patent
`
`Owner’s failure to submit them with the Response is no more than attorney
`
`negligence. Paper 40, 1–3. Petitioner argues it will suffer prejudice in that
`
`Petitioner’s time to prepare for the deposition of Patent Owner’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. Id., 3. Petitioner also argues that Patent
`
`Owner’s scientific argument is baseless. Id., 3–4.
`
`Upon consideration of the documents and the parties’ arguments, we
`
`conclude that the interests of justice are served by permitting entry of the
`
`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
`
`Grangaud correctly identified the substance he administered as being astaxanthin.
`
`Paper 32, 2. We deem any prejudice to Petitioner to be negligible. Petitioner will
`
`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.
`
`
`
`Case IPR2013-00401
`Patent 5,527,533
`
`
`For these reasons, it is
`
`ORDERED that Patent Owner’s motion to submit supplemental information
`
`is granted; and
`
`FURTHER ORDERED that Patent Owner shall file the two supplemental
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`documents as separate, numbered exhibits.
`
`
`
`PETITIONER:
`
`Joseph A. Rhoa
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`
`George E. Darby
`PARADISE PATENT SERVICES, INC.
`cyan@teleport-asia.com
`gdarby@kanikapilarecords.com
`
`PATENT OWNER:
`
`Mark Schuman
`Iain McIntyre
`Todd Werner
`CARLSON CASPERS
`mschuman@carlsoncaspers.com
`imcintyre@carlsoncaspers.com
`twerner@carlsoncaspers.com
`
`
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