Trials@uspto.gov
`Tel: 571-272-7822
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`Paper No. 44
`Entered: June 6, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`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 and GEORGIANNA W. BRADEN,
`Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`By email dated June 5, 2014 (copy attached), the University requests
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`guidance regarding the proper way to challenge Cyanotech’s Reply and reply
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`evidence for exceeding the proper scope of reply. This request follows a
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`conference call held on May 29, 2014 between the Board and the parties to discuss
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`the same issue. During that call, the Board suggested that the parties attempt to
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`resolve the dispute by considering whether any portions of the University’s
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`Response and/or Cyanotech’s Reply could be withdrawn from consideration.
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`The University explains that the parties have been unable to agree to reach
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`agreement. The University maintains that its Response was responsive to
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`Cyanotech’s Petition, and Cyanotech maintains that its Reply does not exceed the
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`proper scope of reply. The University requests guidance from the Board as to how
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`to challenge the Reply, given its perception that panels of the Board have not
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`handled such challenges uniformly.
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`After considering the parties’ contentions, we determine that the question of
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`whether Cyanotech’s Reply exceeds the proper scope of reply is one that we will
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`take up in preparing the final written decisions for these cases. We decline to
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`authorize the University to file any sort of challenge to the Reply at this time. The
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`University similarly may not raise the issue in a motion to exclude. The University
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`may address the issue during oral argument if it chooses.
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`We remind the parties that a petitioner’s reply “may only respond to
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`arguments raised in the corresponding opposition.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (citing 37 C.F.R. § 42.23).
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`We caution Cyanotech that a reply that raises new issues or belatedly introduces
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`new evidence will not be considered, and we will not distinguish proper portions of
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`the reply from improper portions. See id. We further caution Cyanotech that,
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`should we determine that it has submitted a Reply that exceeds the proper scope of
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`reply in any way, Cyanotech runs the risk that the entire Reply, and all Reply
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`evidence, will be given no consideration in the final written decisions. See id.
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`Accordingly, it is hereby
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`ORDERED that the University is not authorized to file any paper or exhibit
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`challenging the scope of Cyanotech’s Reply.
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`FOR PETITIONER:
`
`
`Joseph A. Rhoa
`NIXON & VANDERHYE P.C.
`
`George E. Darby
`PARADISE PATENT SERVICES, INC.
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`
`FOR PATENT OWNER:
`
`
`Mark D. Schuman
`Iain A. McIntyre
`Todd Werner
`CARLSON CASPERS
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`__________________________________________________________________
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`From: Todd Werner [mailto:TWerner@carlsoncaspers.com]
`Sent: Thursday, June 05, 2014 5:09 PM
`To: Todd Werner; Trials
`Cc: Mark Schuman; 'Joseph A. Rhoa'; darbypatent@teleport-asia.com; Rhonda Firner; Diana Lutz-Clark;
`Peter Kohlhepp
`Subject: Case No. IPR2013-00401: Request for Teleconference by Patent Owner
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`
`Dear PTAB:
`
`
`Patent Owner hereby requests a second telephone conference for Case No. IPR2013-00401 so that it may
`seek additional guidance regarding how to proceed with its request to exclude Petitioner's Reply and new
`supporting evidence. As requested by the Board, the parties have discussed whether this issue can be
`resolved by withdrawing certain portions of Petitioner's reply materials. As reflected in the appended
`correspondence, Petitioner will not withdraw any portion of the Dorey declaration, or any of its other
`reply materials/evidence, unless Patent Owner voluntarily withdraws portions of its own timely-filed
`expert declaration and response. Patent Owner will not agree to do so, as the period for issuing any
`objections to those timely-filed materials passed without any objections from Petitioner as to the
`relevance or propriety of the submissions. Thus, the parties are unfortunately at an impasse.
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`As explained during the previous call, the petition at issue argued that vitamin A deficiency (VAD)
`inherently involves the same types of damage, disease, and disorders to which the claims at issue are
`directed, and the cited art therefore anticipated the claimed invention. Petitioner based this argument on
`the notion that vitamin A serves as an antioxidant, and that vitamin A deficient rats were therefore
`subjected to free radical attack without the protection offered by vitamin A. (E.g., Petition at 49-50.) The
`Board granted the petition on this basis:
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`The evidence presented by Cyanotech tends to demonstrate that retinal damage is inherent to
`the condition of vitamin A deficiency-induced xerophthalmia and Grangaud discloses that
`administration of astaxanthin to vitamin A-deficient rats treats ocular lesions, a visible sign of
`xerophthalmia, thereby improving the vision of the rats. Pet. ’401, 14-16; Grangaud, 44. In view
`of this evidence, we conclude that there is a reasonable likelihood that Cyanotech will prevail in
`proving unpatentability of claim 1 for anticipation by Grangaud. See Perricone v. Medicis Pharm.
`Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“‘Under the principles of inherency, if the prior
`art necessarily functions in accordance with, or includes, the claims limitations, it
`anticipates.”’ (citation omitted)).
`
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`(Decision at 13 (emphasis added).) Patent Owner's Response squarely focused on this issue—challenging
`the conclusion that vitamin A provides anti-oxidant protection to the eye, as well as the conclusion that
`VAD inherently involves the damage, disease, or disorders to which the claimed methods are
`directed. Petitioner's Reply, did not defend its original argument (that vitamin A acts as an antioxidant
`and its absence in the eye causes free radical damage), but substitute that argument with a new theory to
`support the conclusion that VAD inherently involves the damage, disease, or disorder to which the claims
`are directed (i.e., that vitamin A deficiency causes retinal cells to die, and the process the body uses to
`metabolize dead cells produces free radicals, which, in turn, inherently cause free radical damage). While
`the reason why something is inherent may not be critical, here the parties dispute whether the relevant
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`diseases/disorders are, in fact, inherent. Accordingly, Patent Owner requests a conference call to obtain
`permission to file a motion to exclude these materials.
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`Counsel for all of the named parties are available for a call anytime tomorrow afternoon (June 6) after 2
`pm Eastern.
`
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`Counsel for Petitioner is not available Monday June 9. Under the Scheduling Order, Motions to Exclude
`are due June 9. Accordingly, to the extent the Board is not available for a call tomorrow, Patent Owner
`also seeks an extension to this deadline solely for purposes of pursuing a motion to exclude as set forth
`herein.
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`
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`Best regards,
`
`
`Todd S. Werner
`Counsel for Patent Owner (pro hac vice)
`Carlson, Caspers, Vandenburgh,
`Lindquist & Schuman
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`twerner@carlsoncaspers.com
`(612) 436-9655
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