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`571-272-7822
`Date Entered: July 21, 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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`Cases IPR2013-00401 and IPR2013-00404 (consolidated)
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`Patent 5,527,533
`____________
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`
`
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`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`KAMHOLZ, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`By email dated July 18, 2014, Cyanotech requested a conference call to seek
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`authorization to file a motion to submit supplemental information under 37
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`C.F.R. § 42.123(b). A conference call was held on July 21, 2014.
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`Cyanotech seeks to submit paragraph 179 from the Expert report of the
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`University’s expert, Dr. Kaushal, from a related district court litigation. Cyanotech
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`states that it seeks to submit this information in order to impeach Dr. Kaushal’s
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`testimony in this proceeding.
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`The University argues that Cyanotech is taking paragraph 179 out of context
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`and requests that, if paragraph 179 is submitted, paragraphs 177 and 178 be
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`submitted as well. Cyanotech does not object.
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`Upon consideration, we authorize Cyanotech’s request. Cyanotech is
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`reminded that it must, in its motion, show that it is entitled to the relief requested,
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`that the supplemental information reasonably could not have been obtained earlier,
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`and that consideration of the information would be in the interests of justice. See
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`37 C.F.R. §§ 42.20(c); 42.123(b).
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`Accordingly it is
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`ORDERED that Cyanotech is authorized to file a motion to submit
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`supplemental information;
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`FURTHER ORDERED that the information sought to be submitted shall
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`consist of paragraphs 177, 178, and 179 of Dr. Kaushal’s district court expert
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`report, no more and no less;
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`FURTHER ORDERED that the motion is limited to three pages and must be
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`submitted by July 25, 2014; and
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`FURTHER ORDERED that no opposition is authorized at this time.
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`2
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`For PETITIONER:
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`Joseph A. Rhoa
`NIXON & VANDERHYE P.C.
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`George E. Darby
`PARADISE PATENT SERVICES, INC.
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`
`For PATENT OWNER:
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`Mark D. Schuman
`Iain A. McIntyre
`CARLSON CASPERS
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`3
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`
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`Cases IPR2013-00401, -00404
`Patent 5,527,533
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`
`______________________________________________________________
`From: George E. Darby [mailto:darbypatent@teleport-asia.com]
`Sent: Friday, July 18, 2014 7:14 AM
`To: 'trials@uspto.gov'
`Cc: Joseph A. Rhoa; 'Bob Rowan'; 'Todd Werner'; 'Peter Kohlhepp'; 'Bobby Foster';
`'Mschuman@carlsoncaspers.com'; 'imcintyre@carlsoncaspers.com'; 'Russell Rigby';
`gdarby@kanikapilarecords.com
`Subject: IPR2013-00401. Req, for Conf. Call
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`
`Re: IPR2013-00401
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`Dear Patent Trials and Appeal Board:
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`Petitioner hereby requests a brief telephone conference with the Board to request permission to
`submit paragraph 179 of Dr. Kaushal’s expert report in the MDFla litigation as Supplementary
`Evidence in the above IPR.
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`Counsel for Patent Owner and for Petitioner are available 21-24 July (M-W), starting at 11 a.m.
`or later, EDT.
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`Thank you,
`G. Darby
`Back-up Counsel for Petitioner
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`4
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