`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Cyanotech Corporation
`Petitioner
`
`V.
`
`The Board of Trustees of the University of Illinois
`Patent Owner
`
`
`
`Case: IPR2013—00404
`
`Patent: 5,527,533
`
`Filed: June 29, 2013
`
`Administrative Patent Judge Scott E. Kamholz
`
`MANDATORY NOTICES OF PATENT OWNER
`
`THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS
`
`Dear Sir/Madam:
`
`Pursuant to 37 CPR. §42.8(a)(2) and (b)(1)-(4), Patent Owner, The Board of Trustees of
`
`the University of Illinois, submits the following mandatory notice information.
`
`(1) Real Party-in-Interest. The real parties-in-interest on the side of Patent Owner are
`
`Patent Owner, The Board of Trustees of the University of Illinois (“University of Illinois”), and
`
`US. Nutraceuticals LLC d/b/a Valensa International (“Valensa”), the exclusive licensee of the
`
`‘533 patent.
`
`(2) Related Matters. Patent Owner identifies the judicial or administrative matters that
`
`would affect, or be affected by, a decision in this proceeding as follows:
`
`An inter partes review of the '5 33 patent cannot be instituted because Petitioner
`
`Cyanotech Corporation (“Petitioner”) filed a civil action challenging the validity of the '533
`
`
`
`patent before the date On which the petition for inter partes review was filed. 35 U.S.C. §
`
`315(a)(1). Specifically, on June 20, 2012 Petitioner filed a civil action challenging the validity
`
`of the ‘5 33 patent in the United States District Court for the District of Hawaii. Cyanotech
`
`
`Corporation v. U.S. Nutraceuticals, LLC d/b/a Valensa International and The University_o:f
`
`
`Illinois, Civil Action No. 1:12-cv—00352—JMSRLP. Patent Owner will more fully address this
`
`issue in its Preliminary Response.
`
`Valensa and Patent Owner also filed a lawsuit on June 29, 2012, in the United States
`
`District Court for the Middle District of Florida entitled U.S. Nutraceuticals LLC d/b/a Valensa
`
`
`International; and The Board of Trustees of the University of Illinois vs. Cyanotech Corporation1
`
`
`and Nutrex Hawaii Inc., Civil Action No. 5 : 12-cv-3 66—00—10PRL, alleging infringement of the
`
`‘533 patent by Petitioner and its subsidiary, Nutrex Hawaii, Inc.
`
`(3) Patent Owner’s Counsel:
`
`Lead Counsel:
`
`Mark D. Schuman (PTO No. 31,197)
`
`Backup Counsel:
`
`Iain A. McIntyre (PTO No. 40,337)
`
`Pursuant to 37 CPR. §42.10(b), a Power of Attorney is submitted with the Mandatory
`
`Notices of Patent Owner.
`
`(4) Patent Owner’s Service Information:
`
`Lead Counsel:
`
`(i)
`
`Email address: mschuman@carlsoncaspers.com
`
`(ii)
`
`Postal mailing address:
`Mark D. Schuman
`
`CARLSON CASPERS
`
`225 South Sixth Street, Suite 4200
`Minneapolis, Minnesota 55402
`
`(iii)
`
`Hand—delivery address: same as above.
`
`(iv)
`
`Telephone Number:
`
`(612) 43 6-9650
`
`(v)
`
`Facsimile Number:
`
`(612) 43 6-9605
`
`
`
`Backup Counsel:
`
`(i)
`
`Email address: imcintyre@carlsoncaspers.com
`
`(ii)
`
`Postal mailing address:
`Iain A. McIntyre
`CARLSON CASPERS
`
`225 South Sixth Street, Suite 4200
`Minneapolis, Minnesota 55402
`
`(iii)
`
`Hand-delivery address: same as above.
`
`(iv)
`
`Telephone Number:
`
`(612) 436—9610
`
`(V)
`
`Facsimile Number:
`
`(612) 436-9605
`
`Dated: July 24, 2013.
`
`Respectfully submitted,
`
`s/ Mark D. Schuman
`
`Mark D. Schuman (PTO No. 31,197)
`CARLSON CASPERS
`
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`mschuman@carlsoncaspers.com
`Telephone: (612) 436—9600
`Facsimile: (612) 436—9605
`mschuman@carlsoncaspers.com
`
`Counsel for Patent Owner The Board of Trustees
`
`of the University of Illinois
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 24, 2013, I electronically filed the foregoing Mandatory
`Notices ofPatent Owner The Board of Trustees ofthe University ofIllinois With the Patent
`Review Processing System (PRPS) of the Patent Trial and Appeal Board which Will send an
`email notification of electronic filing to the following:
`
`Joseph A. Rhoa
`NIXON & VANDERHYE, PC.
`
`1' ar@nixonvan. com
`
`George E. Darby
`PARADISE PATENT SERVICE, INC.
`cyantheleport-asiacom
`
`5/ Mark D. Schuman
`
`Mark D. Schuman
`
`PTO No. 31,197
`
`
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