Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 62
`Entered: June 6, 2014
`
`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 and SHERIDAN K. SNEDDEN,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 62
`Entered: June 6, 2014
`
`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 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, May 28, 2014, among
`Amanda Hollis and Mitch Jones, representing Petitioner; Steve Alteiri and
`Laura Cunningham, representing Patent Owner; and Judges Green and Snedden. A
`court reporter was present on the call, and a transcript of the call was filed by
`Patent Owner.1 Patent Owner requested the call to obtain authorization to file a
`motion for additional discovery, pursuant to 37 C.F.R. § 42.51.
`Patent Owner noted that during the deposition of Petitioner’s expert, Mr.
`Bjorn Ole Haugsgjerd, when discussing experiments he conducted based on
`Beaudoin, Mr. Haugsgjerd identified different documents that he created
`contemporaneously with those experiments, such as laboratory notebooks and
`protocols for the experiments, as well as several reports related to the experiments.
`Patent Owner noted that as Mr. Haugsgjerd had identified the existence of these
`documents at his deposition, as well as the relevance of the documents referenced
`by Mr. Haugsgjerd at his deposition to the challenge on which trial was instituted
`over the Beaudoin reference, it is an appropriate area to seek additional discovery.
`Petitioner responded that they would oppose any such motion for additional
`discovery. According to Petitioner, there are privilege concerns with respect to the
`reports prepared by Mr. Haugsgjerd, as they were written for litigation in the
`District Court of Delaware involving U.S. Patent No. 8,030,348 (“the ’348
`patent”), to which the patent at issue claims priority, as well as for reexamination
`of the ’348 patent. As to the laboratory notebooks, Petitioner stated that they were
`Mr. Haugsgjerd’s notebooks, in his possession in Norway, and that the notebooks
`also contained information not related to the Beaudoin experiments. Upon inquiry,
`
`
`1 This order summarizes the statements made during the conference call. A more
`detailed record may be found in the transcript (Ex. 2026).
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-00003
`Patent 8,278,351
`
`Patent Owner noted that they would be satisfied with copies of the notebook pages
`that dealt with the Beaudoin experiments, and they would not necessarily need the
`entire notebooks.
`As relevant to Mr. Haugsgjerd’s documents discussed herein, Patent Owner
`is authorized to file a motion for additional discovery, which is to be no longer
`than ten (10) pages, which should be filed with the Board by May 30, 2014.
`Petitioner is authorized to file an opposition to the motion, which is also to be no
`longer than 10 pages, which should be filed with the Board no later than June 4,
`2014. We understand that Patent Owner would like a decision on the motion by
`June 13, 2014, but note that may not be possible given the workload of the judges
`on the panel. In that regard, we note that the parties may stipulate to changes to
`DUE DATES 1 through 3, and also note that there should be some flexibility in the
`schedule given that Patent Owner is not planning on filing a motion to amend.
`Thus, we encourage the parties to confer as needed to accommodate our schedule
`in deciding Patent Owner’s motion for additional discovery. If the parties cannot
`come to such agreement, they should request an additional conference call with the
`panel. In order to aid the parties in coming to an agreement, we authorize the
`parties to stipulate to changes in DUE DATES 4 and 5, with the proviso that, if the
`parties are going to request oral argument, the request for oral argument be filed by
`DUE DATE 4 as set forth in the scheduling order.
`Petitioner also stated during the call that it felt that Patent Owner had gone
`beyond the scope of Mr. Haugsgjerd’s direct testimony, as Mr. Haugsgjerd’s direct
`testimony was in essence only five paragraphs, while Patent Owner questioned Mr.
`Haugsgjerd for a full seven hours. We noted that anything that is reasonably
`related to the declarant’s direct testimony would not be considered outside the
`scope of the direct. We reminded the parties that if it felt a line of cross-
`
` 3
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`Case IPR2014-00003
`Patent 8,278,351
`
`examination was clearly improper, it should contact the Board to obtain guidance,
`as there is very little we can do once the deposition is over. Moreover, we remind
`Petitioner that it also can file a motion to exclude the cross-examination testimony
`of Mr. Haugsgjerd, so long as an objection as to “the content, form, or manner of
`taking the deposition [was] . . . made on the record during the deposition.” 37
`C.F.R. § 42.53(f)(8).
`Accordingly, it is
`ORDERED that Patent Owner is authorized to file a motion for additional
`discovery to be no longer than ten (10) pages and due no later than May 30, 2014;
`FURTHER ORDERED that Petitioner is authorized to file an opposition to
`Patent Owner’s a motion for additional discovery to be no longer than ten (10)
`pages and due no later than June 4, 2014;
`FURTHER ORDERED that Patent Owner is not authorized to file a reply to
`Petitioner’s opposition to Patent Owner’s motion for additional discovery; and
`FURTHER ORDERED that the parties are authorized to stipulate to changes
`in DUE DATES 4 and 5, with the proviso that, if the parties are going to request
`oral argument, the request for oral argument be filed by DUE DATE 4 as set forth
`in the scheduling order.
`
`
`
`
` 4
`
`
`
`
`
`
`
`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
`
`
` 5
`
`
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`
`
`
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