Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 37
`Entered: May 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AKER BIOMARINE AS
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
`_______________
`
`Case IPR2014-00003
`Patent 8,278,351
`_______________
`
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`

`

`Case IPR2014-00003
`Patent 8,278,351
`
`
`A conference call was held on Wednesday, April 23, 2014, among Amanda
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`Hollis and John Mitchell Jones, representing Petitioner; Stephen Altieri,
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`representing Patent Owner; and Judges Green, Bonilla and Snedden.
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`Petitioner requested a call to discuss a motion to submit supplemental
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`evidence pursuant to 37 C.F.R. § 42.123, noting that the deadline set forth in the
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`Rule for doing so is April 24, 2014. In particular, Petitioner desires to submit the
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`following four items as supplemental evidence on the grounds that they are
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`relevant to an argument advanced by Patent Owner in connection with a heating
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`step used in the prior art Beaudoin process: Deposition of Dr. Jaczynski (Patent
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`Owner’s expert), statement of Dr. van Breemen (Petitioner’s expert), Deposition of
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`Dr. White (Patent Owner’s expert) and Deposition of Dr. Sampalis (inventor of
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`patent at issue). Petitioner noted that the parties were involved in proceedings
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`before the ITC, and the foregoing items were generated in connection with those
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`proceedings.
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`Patent Owner objects to the submission of the Deposition of Dr. Sampalis on
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`the ground that the deposition transcript contains confidential information.
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`Moreover, as the deposition transcript is voluminous, Patent Owner argues that it is
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`not a simple matter to determine those portions of the transcript that contain
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`confidential information. Patent Owner also desires to work out a global
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`understanding between the parties regarding the handling and use of this transcript
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`as well as documents of a similar nature from ITC action Investigation No. 337-
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`TA-877. In addition to the foregoing, Patent Owner requested guidance regarding
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`the timing for submission of evidence prior to the opening of discovery.
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`The panel noted that there is no reason to file the above-mentioned evidence
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`as supplemental information, as we will not independently look at the evidence,
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`but will only consider it to the extent that it is relied upon by a party in its papers.
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`Case IPR2014-00003
`Patent 8,278,351
`
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`Thus, Patent Owner may submit, with its Response, evidence that it discusses and
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`relies upon in that paper. Such action will also provide the parties time to work out
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`the confidentiality issues between themselves.
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`Accordingly, it is
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`ORDERED that Petitioner is not authorized to submit supplemental
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`evidence at this time.
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`

`

`Case IPR2014-00003
`Patent 8,278,351
`
`
`
`
`PETITIONER:
`
`J. Mitchell Jones
`Casimir Jones SC
`jmjones@casimirjones.com
`
`Amanda Hollis
`Kirkland & Ellis
`amanda.hollis@kirkland.com
`
`PATENT OWNER:
`
`Stephen L. Altieri
`J. Dean Farmer
`Cooley LLP
`saltieri@cooley.com
`dfarmer@cooley.com
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