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[1]
`
`Patent 5,527,533
`
`
`
`
`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`____________
`
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(b)
`
`____________
`
`
`Submitted: July 23, 2014
`
`
`[1] Consolidated with Case IPR2013-00404
`
`
`
`
`OCS-2379230
`
`
`_______________
`
`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[1]
`
`Patent 5,527,533
`
`
`
`
`Before SCOTT E. KAMHOLZ, SHERIDAN K. SNEDDEN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`____________
`
`
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(b)
`
`____________
`
`
`Submitted: July 23, 2014
`
`
`[1] Consolidated with Case IPR2013-00404
`
`
`
`
`OCS-2379230
`
`
`
`Ptr’s Motion to Submit Suppl. Info. (Kaushal ¶¶177-179)
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
`
`
`In Paper 59, the Patent Trial and Appeal Board (“Board”) authorized
`
`Cyanotech Corporation (“Petitioner”) to file this Motion to submit supplemental
`
`information under 37 C.F.R. § 42.123(b) comprised of paragraphs 177 to 179 of
`
`the “Expert Infringement Report of Shalesh Kaushal M.D., Ph.D.” (Ex. 1082
`
`hereto), submitted by Patent Owner (“PO”) in related district court litigation
`
`(“litigation”, Civ. No. 5:12-cv-366-oc-10PRL, M.D.Fla.). Dr. Kaushal’s
`
`testimony in Ex. 1082 directly conflicts with his Declaration (Ex. 2015) submitted
`
`by PO in this IPR.
`
`Petitioner is entitled to the relief requested to impeach the credibility of Dr.
`
`Kaushal on a central point of dispute and to address the questionable merits of
`
`PO’s position. See, Behler v. Hanlon, 199 F.R.D. 533, 556-58 (D. Md. 2001)
`
`(“Impeachment by contradiction or specific error is a well-recognized technique
`
`used to bring specific errors in testimony to the attention of the trier of fact…”
`
`including by “confronting the witness with his or her own contradictory prior
`
`statement…”1
`
`FED.R.EVID. 806 (made applicable herein by 37 C.F.R. §42.62) provides that
`
`when a statement authorized by an opposing party has been admitted in evidence
`
`(e.g. under FED.R.EVID. 801(d)(2)(c)), the declarant’s credibility may be attacked
`
`1 The Behler court further noted that “The importance of credibility of witnesses to
`the trial of cases cannot be overstated, and this is especially true with respect to
`expert witnesses.” Id., at 558.
`
`1
`
`OCS-2379230
`
`
`
`Ptr’s Motion to Submit Suppl. Info. (Kaushal ¶¶177-179)
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
`
`
`by any evidence that would be admissible for those purposes if the declarant had
`
`testified as a witness “regardless of when it occurred.”2
`
`Here, Dr. Kaushal’s testimony goes to the heart of PO’s attack on the prior
`
`art relied on by Petitioner. In PO’s Response (Paper 32, at 24), PO asserts that
`
`“Free radical damage (or the prevention of such damage) is not involved, let alone
`
`necessarily and inherently involved, in Vitamin A deficiency or xeropthalmia,”
`
`citing Dr. Kaushal’s Declaration, Ex. 2015, ¶28:
`
`As I do not believe that free radical attack plays a role in xerophthalmia
`or vitamin A deficiency, it is my opinion that retinal damage or disease
`caused by free radical attack is not inherent to xerophthalmia or vitamin
`A deficiency.
`
`But in Ex. 1082, ¶179, Dr. Kaushal states in his Expert’s Report in the litigation:
`
`The vast majority of retinal conditions are in some way related to the
`effects of free-radicals or toxic oxygen species, thus general references to
`eye health would be likely to induce infringement of the Tso patent.
`
`Thus, in an effort to narrow the patent claims to avoid invalidation in the
`
`IPR, Dr. Kaushal’s Declaration argues that free radicals are not involved in vitamin
`
`A deficiency (“VAD”) and therefore free radicals are not involved in retinal
`
`degeneration (e.g., nyctalopia (night blindness disease)) induced by chronic VAD.
`
`2 See also FED.R.EVID. 104(e), 611(b) and the “ ‘relevance’ based approach to
`impeachment of credibility under Rules 401, 402, and 403 discussed in Buckley
`Towers Condominium, Inc. v. QBE Ins. Corp., No. 07-22988, 2008 WL 5505415 at
`*2 (S.D. Fla. Oct. 21, 2008). “Under this approach, the inquiry is whether there is
`any logical tendency of a given evidence to make a witness’ trial testimony less
`credible than it would be absent its introduction.” Id., at *2.
`
`2
`
`OCS-2379230
`
`
`
`Ptr’s Motion to Submit Suppl. Info. (Kaushal ¶¶177-179)
`
`
`
`Case IPR2013-00401
`Patent No. 5,527,533
`
`
`In contrast, in an effort to broaden the scope of the claims in the litigation to
`
`maximize potential incidents of infringement, Dr. Kaushal takes the opposite view,
`
`stating that the “vast majority of retinal conditions” (which would certainly include
`
`retinal degeneration caused by VAD) are “in some way related to the effects of
`
`free-radicals” such that even “general references to eye health” would fall within
`
`the scope of the patent. See Ex. 1082, ¶179.
`
`Dr. Kaushal’s contradictory statements regarding the role of free-radicals
`
`seriously undermine his credibility and PO’s position in this IPR. Fairness and
`
`the interests of justice dictate that this new supplemental information be admitted
`
`and considered by the Board.
`
`
`
` Petitioner could not previously submit this Motion because Ex. 1082 was
`
`not served on Petitioner until July 9, 2014, and therefore the supplemental
`
`information could not have been obtained earlier.
`
`Date: July 23, 2014
`
`
`Respectfully submitted,
`
`
`By: / George E. Darby /
`Joseph A. Rhoa (Reg. No. 37,515)
`George E. Darby (Reg. No. 44,053)
`Robert A. Rowan (pro hac vice)
`Counsel for Petitioner Cyanotech
`Corporation
`
`3
`
`OCS-2379230
`
`
`
`Ptr’s Motion to Submit Suppl. Info. (Kaushal ¶¶177-179)
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2013-00401
`Patent No. 5,527,533
`
`
`I hereby certify service of the foregoing Petitioner’s Motion to Submit
`
`Supplemental Information, Exhibit 1082 and Petitioner’s Updated Exhibit List to the
`
`following counsel for patent owner on July 23, 2014 via email (pursuant to
`
`agreement between the parties):
`
`Mark D. Schuman
`Iain A. McIntrye
`Todd S. Werner
`Peter M. Kohlhepp
`Russell Rigby
`CARLSON CASPERS
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`(mschuman@carlsoncaspers.com)
`(imcintyre@carlsoncaspers.com)
`(twerner@carlsoncaspers.com)
`(pkohlhepp@carlsoncaspers.com)
`(rrigby@carlsoncaspers.com)
`
`
`
`
`
`
`By: /Joseph A. Rhoa/
`Joseph A. Rhoa
`Reg. No. 37,515
`
`
`
`
`
`
`
`
`
`
`
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