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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AKER BIOMARINE AS
`Petitioner
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`v.
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`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
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`CASE NO. IPR2014-00003
`U.S. Patent No. 8,278,351
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`PATENT OWNER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(3)
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`Case No.: IPR2014-00003
`Patent Owner’s Updated Mandatory Notices
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(3)
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`Pursuant to 37 C.F.R. § 42.8(a)(3), the patent owner, NEPTUNE TECHNOLOGIES
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`AND BIORESSOURCES INC., 545 Promenade du Centropolis, Laval, Québec, Canada
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`H7T 0A3 (“Patent Owner” or “Neptune”), hereby submits the following updated mandatory
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`notices:
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`1.
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`2.
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`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1).
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`Neptune is the Patent Owner and the real party-in-interest in this proceeding.
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`Related Matters under 37 C.F.R. § 42.8(b)(2).
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`The following judicial or administrative matters may affect or be affected by a
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`decision in this proceeding:
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`U.S. Patent No. 8,278,351 (“the ‘351 Patent”) was asserted in two patent litigations
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`in the U.S. District Court for the District of Delaware: Neptune Technologies and
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`Bioressources Inc., v. Aker Biomarine ASA, et al., case 12-cv-1252 (filed October 2, 2012)
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`and Neptune Technologies and Bioressources Inc., v. Enzymotec Limited, et al., case No.
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`12-cv-1253 (filed October 2, 2012). These litigations have settled.
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`The ‘351 Patent was also asserted in the International Trade Commission. The
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`Investigation, which was requested by the Patent Owner on January 29, 2013, is entitled
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`Certain Omega-3 Extracts from Marine or Aquatic Biomass and Products Containing the
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`Same, Investigation No. 337-TA-877. This investigation has settled.
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`Case No.: IPR2014-00003
`Patent Owner’s Updated Mandatory Notices
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`Three additional Inter Partes Reviews of the ‘351 Patent have been requested. Inter
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`Partes Review IPR2014-00556 was filed on April 4, 2014 and is pending. Inter Partes
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`Review IPR2014-00586 was filed on April 11, 2014 and is pending. Inter Partes Review
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`IPR2014-00636 was filed on April 23, 2014 and is pending.
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`The ‘351 Patent is also subject to Ex Parte Reexamination Control No. 90/012,698
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`(filed October 2, 2012). This reexamination has been stayed pending the outcome of Inter
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`Partes Review IPR2014-00003 (see Paper 25 of IPR2014-00003).
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`The ‘351 patent claims priority from U.S. Patent No. 8,030,348 (“the ‘348 Patent,”
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`filed July 29, 2002; issued October 4, 2011). The ‘348 Patent is the subject of the following
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`litigations, filed by the Patent Owner, in the U.S. District Court for the District of Delaware:
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`Neptune Technologies and Bioressources Inc. v. Aker Biomarine ASA, et al., Case 11-cv-
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`00894 (filed October 4, 2011) and Neptune Technologies and Bioressources Inc. v.
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`Enzymotec Limited, et al., Case 11-cv-00895 (filed October 4, 2011). These litigations have
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`settled.
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`The ‘348 Patent is also subject to Inter Partes Reexamination Control No.
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`95/001,774 (filed October 19, 2011). This reexamination is in progress.
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`U.S. Patent No. 8,383,675 (“the ‘675 Patent,” filed July 10, 2012; issued February
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`26, 2013) claims priority from the ‘351 patent. The ‘675 Patent is the subject of the following
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`litigations, filed by the Patent Owner, in the U.S. District Court for the District of Delaware:
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`Neptune Technologies and Bioressources Inc., v. Aker Biomarine ASA, et al., Case 13-cv-
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`Patent Owner’s Updated Mandatory Notices
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`340 (filed February 28, 2013) and Neptune Technologies and Bioressources Inc., v.
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`Enzymotec Limited, et al., 13-cv-341 (filed February 28, 2013). These litigations have
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`settled.
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`The ‘675 Patent was asserted in the International Trade Commission. The
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`Investigation, which was requested by the Patent Owner on January 29, 2013, is entitled
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`Certain Omega-3 Extracts from Marine or Aquatic Biomass and Products Containing the
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`Same, Investigation No. 337-TA-877. This investigation has settled.
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`Two Inter Partes Reviews of the ‘675 Patent have been requested. Inter Partes
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`Review IPR2014-00126 was filed on November 7, 2013 and is terminated (see Paper 15 of
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`IPR2014-00126). Inter Partes Review IPR2014-00466 was filed on February 27, 2014 and
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`is pending.
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`The following currently pending U.S. patents or patent applications claim priority to
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`the ‘351 or related Patents: U.S. Patent Application No. 13/280,182, filed October 24, 2011,
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`and issued as U.S. Patent No. 8,680,080 on March 25, 2014, and U.S. Patent Application
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`No.13/750,663, filed January 25, 2013.
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`3.
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`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3).
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`The Patent Owner designates the following lead and back-up counsel.
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`LEAD COUNSEL
`Stephen L. Altieri, Ph.D. (Reg. No. 63,133)
`IPR2014-00003@cooley.com
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`Cooley LLP
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`BACK-UP COUNSEL
`J. Dean Farmer, Ph.D. (Reg. No. 57,917)
`IPR2014-00003@cooley.com
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`Cooley LLP
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`Case No.: IPR2014-00003
`Patent Owner’s Updated Mandatory Notices
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`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (617) 937-2370
`Fax: (202) 842-7899
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`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (617) 937-2371
`Fax: (202) 842-7899
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`4.
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`Service Information under 37 C.F.R. § 42.8(b)(4).
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`
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`Please address all correspondence to the lead counsel and the back-up counsel as
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`shown above.
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`The Office is authorized to charge fee deficiencies to Deposit Account 50-1283.
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`
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`DATE: MAY 1, 2014
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
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`Tel: (617) 937-2371
`Fax: (202) 842-7899
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`By:
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`
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`Respectfully submitted,
`COOLEY LLP
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`/ Stephen L. Altieri /
`Stephen L. Altieri, Ph.D.
`Reg. No. 63,133
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`CERTIFICATION OF SERVICE UNDER 37 C.F.R. §§ 42.6(e), 42.105(a))
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`Case No.: IPR2014-00003
`Patent Owner’s Updated Mandatory Notices
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`I, Stephen L. Altieri, Ph.D., hereby certify that that a complete copy of:
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` Patent Owner’s Updated Mandatory Notices;
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` Patent Owner’s Notice of Deposition of J. Thomas Brenna, Ph.D.;
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` Patent Owner’s Notice of Deposition of Dr. Thomas Gundersen;
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` Patent Owner’s Notice of Deposition of Bjorn Ole Haugsgjerd;
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` Patent Owner’s Notice of Deposition of Dr. Ivan Storrø;
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` Patent Owner’s Notice of Deposition of Richard B. Van Breemen, Ph.D.; and
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` this Certificate of Service
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`are being served electronically (as consented to by Petitioner), on the 1st day of May, 2014,
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`the same day as the filing of the above-identified document in the United States Patent and
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`Trademark Office (USPTO), upon:
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`J. Mitchell Jones
`jmjones@casimirjones.com and docketing@casimirjones.com
`Hand delivery address:
`CASIMIR JONES SC
`2275 Deming Way, St. 310
`Middleton, WI 53562
`Telephone: (608) 662-1277
`Facsimile: (608) 662-1276
`Reg. No. 44,174
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`Case No.: IPR2014-00003
`Patent Owner’s Updated Mandatory Notices
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`By:
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`Respectfully submitted,
`COOLEY LLP
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`/ Stephen L. Altieri /
`Stephen L. Altieri, Ph.D.
`Reg. No. 63,133
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`
`
`Amanda Hollis
`amanda.hollis@kirkland.com
`Hand delivery address:
`KIRKLAND & ELLIS
`300 North LaSalle
`Chicago, IL 60654
`Telephone: 312-862-2011
`Facsimile: 312-862-2200
`Reg. No. 55,629
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`DATE: MAY 1, 2014
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
`
`Tel: (617) 937-2371
`Fax: (202) 842-7899
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