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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`----------------------------x
`
`AKER BIOMARINE AS, : Inter Partes
`
` Petitioner, : Review Nos.
`
` v. : IPR 2014-00003
`
`NEPTUNE TECHNOLOGIES AND : Patent No.
`
`BIORESSOURCES, INC., : 8,278,351
`
` Patent Owner. :
`
`----------------------------x
`
` Telephonic Judges' Conference Before
`
` The Honorable Lora M. Green,
`
` The Honorable Jacqueline Wright Bonilla,
`
` and The Honorable Sheridan K. Snedden
`
` Bensalem, Pennsylvania
`
` Tuesday, August 26, 2014
`
` 4:00 p.m.
`
`Job No.: 65195
`
`Pages 1 - 29
`
`Reported by: Cynthia A. Whyte
`
`NEPN Ex. 2064
`Aker v. Neptune
`IPR2014-00003
`
`
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`----------------------------x
`
`AKER BIOMARINE AS, : Inter Partes
`
` Petitioner, : Review Nos.
`
` v. : IPR 2014-00003
`
`NEPTUNE TECHNOLOGIES AND : Patent No.
`
`BIORESSOURCES, INC., : 8,278,351
`
` Patent Owner. :
`
`----------------------------x
`
` Telephonic Judges' Conference Before
`
` The Honorable Lora M. Green,
`
` The Honorable Jacqueline Wright Bonilla,
`
` and The Honorable Sheridan K. Snedden
`
` Bensalem, Pennsylvania
`
` Tuesday, August 26, 2014
`
` 4:00 p.m.
`
`Job No.: 65195
`
`Pages 1 - 29
`
`Reported by: Cynthia A. Whyte
`
`NEPN Ex. 2064
`Aker v. Neptune
`IPR2014-00003
`
`
`
`TELEPHONIC JUDGES' CONFERENCE
`CONDUCTED ON TUESDAY, AUGUST 26, 2014
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` Telephonic Judges' Conference with the Patent
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`Trial and Appeal Board.
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`2
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` Pursuant to Agreement, before Cynthia A. Whyte, a
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`Registered Professional Reporter and Notary Public of
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`the Commonwealth of Pennsylvania.
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` A P P E A R A N C E S
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` ON BEHALF OF PETITIONER AKER BIOMARINE:
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`3
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` AMANDA HOLLIS, ESQUIRE
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` KIRKLAND & ELLIS LLP
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` 300 North LaSalle
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` Chicago, Illinois 60654
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` (312) 862-2011
`
` (Present via telephone)
`
` ON BEHALF OF PETITIONER ENZYMOTEC, LTD.:
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` ELIZABETH J. HOLLAND, ESQUIRE
`
` DANIEL MARGOLIS, ESQUIRE
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` KENYON & KENYON LLP
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` One Broadway
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` New York, New York 10004
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` (Present via telephone)
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` A P P E A R A N C E S C O N T I N U E D
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` ON BEHALF OF PATENT OWNER NEPTUNE TECHNOLOGIES
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` AND BIORESSOURCES, INC.:
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` DEAN FARMER, ESQUIRE
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` COOLEY LLP
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` 500 Boylston Street
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` 14th Floor
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` Boston, Massachusetts 02116
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` (617) 937-2371
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` (Present via telephone)
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` ON BEHALF OF PATENT OWNER NEPTUNE TECHNOLOGIES
`
` AND BIORESSOURCES, INC.:
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` LAURA CUNNINGHAM, ESQUIRE
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` COOLEY LLP
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` 1299 Pennsylvania Avenue, NW
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` Suite 700
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` Washington, DC
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` (202) 842-7800
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` (Present via telephone)
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` C O N T E N T S
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`INTER PARTES REVIEW NO. PAGE
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`IPR 2014-0000 and PATENT NO.
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`8,278,351
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` Proceedings 6
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` P R O C E E D I N G S
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` JUDGE GREEN: Good afternoon. This is
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`Judge Green. I also have on the line Judge Bonilla
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`and Judge Snedden. I would like to start with a roll
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`call.
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` For petitioner Aker?
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` MS. HOLLIS: This is Amanda Hollis from
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`Kirkland & Ellis, Your Honor.
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` JUDGE GREEN: Thank you.
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` Who do I have for Enzymotec?
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` MS. HOLLAND: Elizabeth Holland and Dan
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`Margolis from Kenyon & Kenyon.
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` JUDGE GREEN: Who do I have for patent
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`owner?
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` MR. FARMER: You have Dean Farmer and Laura
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`Cunningham from Cooley for Neptune, Your Honor.
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` JUDGE GREEN: And then has anybody arranged
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`for a court reporter to be on the line?
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` THE COURT REPORTER: Yes, Your Honor. I'm
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`Cindy Whyte from Planet Depos.
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` JUDGE GREEN: And do you know who arranged
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`for the court reporter?
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` THE COURT REPORTER: Yes; Laura Cunningham.
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` JUDGE GREEN: Thank you.
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` Ms. Cunningham, you will make sure that a
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`copy of the transcript gets filed as an exhibit in due
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`course?
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` MS. CUNNINGHAM: Yes, Your Honor.
`
` JUDGE GREEN: Okay. Thank you very much.
`
` It's my understanding that Petitioner Aker
`
`Biomarine requested this conference call to request
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`leave to, one, compel discovery of specific documents
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`containing inconsistent statements or inconsistent
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`decisions or, two, request discovery of specific
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`identified documents.
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` Starting with the first category, counsel
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`for Aker, would you like to begin?
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` MS. HOLLIS: Yes, Your Honor. This is
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`Amanda Hollis.
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` We are requesting discovery of a total of
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`eight documents under both the rules to compel routine
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`discovery of inconsistent statements or, in the
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`alternative, for additional discovery.
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` The eight documents really boil down to
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`about five because three of those are just different
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`volumes of the same witness' deposition transcript and
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`another one of those documents is a translation of a
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`second.
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` We are seeking discovery of those
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`documents, and the discovery would be no burden to
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`Neptune. We are not asking them to search for any
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`documents. We have identified what we are requesting
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`with specificity. They both contain statements that
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`are inconsistent with positions that Neptune has taken
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`and are at least relevant to those positions in the
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`IPR.
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` I am a little bit handcuffed to explain in
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`full detail the relevance of those documents and how
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`they are inconsistent because Neptune in response to
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`our request has not allowed us to discuss those
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`documents with you in a manner that would reveal their
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`content because they claim they are confidential. But
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`even though, despite their claim, you know, we can
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`still talk about these documents in a way that doesn't
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`reveal the contents of them, and I hope that this will
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`convey their relevance to you.
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` The first category is a couple documents
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`relating to Neptune's own repeats of the Beaudoin
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`prior art process. You probably recall that Neptune
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`says we did not faithfully repeat that Beaudoin
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`process or Beaudoin patent in our expert declarations
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`or in our petitions because our experts used some
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`laboratory equipment like a separatory funnel that
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`they say is not consistent with the Beaudoin repeats.
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` You know, they also say that we didn't
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`faithfully repeat Beaudoin because we didn't test some
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`unclaimed parameters of the oil as it was being
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`processed.
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` This first category of documents that we
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`are seeking is a handful of about three. One is a
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`deposition of a man named Pierre St. John, a Neptune
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`employee, and two exhibits to that deposition, and
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`these relate to how Neptune itself repeated the
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`Beaudoin process when it represented to the patent
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`office that it had repeated that process, and if you
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`review those, you will see, we think, that Neptune's
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`open repeats are inconsistent with the positions it
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`has been taking now in this IPR.
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` JUDGE GREEN: Okay.
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` MS. HOLLIS: The second category involves
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`an e-mail regarding commercial product that Neptune
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`and its affiliates have contended practices the
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`invention of the 351 patent, a Capri product. It's a
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`single e-mail, and it involves a named inventor of the
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`351 patent and it relates to a study performed on
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`krill oil, a product called Capri, and we believe that
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`this e-mail also is inconsistent with Neptune's
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`positions in the IPR including its position that the
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`heating step that they say is required by the Beaudoin
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`process will destroy phospholipids in the oil
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`including the claimed phospholipid.
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` JUDGE GREEN: Okay. And you're seeking
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`this under either, one, to contain the inconsistent
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`positions or specifically to identify documents.
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` MS. HOLLIS: Correct. Yes, sorry. They
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`are specifically identified documents. All of these
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`documents are specifically identified, and we believe
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`they contain inconsistent statements or are, at
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`minimum, relevant and therefore satisfy the
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`requirements for additional discovery.
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`TELEPHONIC JUDGES' CONFERENCE
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` JUDGE GREEN: Okay. And those are the only
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`two categories?
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` MS. HOLLIS: No, there's a couple more.
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` The next category is the deposition of the
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`inventor Fontini Sampalis that was taken in connection
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`with the ITC litigation between the parties.
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` There are several excerpts of this
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`deposition transcript that we feel are inconsistent,
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`again, with Neptune's positions on heat. We have
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`identified those relevant excerpts to Neptune. We've
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`asked their permission for their consent to produce
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`and submit to the Board the entire transcripts, given
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`the Board's previous indications in conference calls
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`and otherwise that it wants to see complete
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`transcripts, but even if Neptune would refuse to
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`provide or allow submission of the entire transcripts,
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`we have asked them if they would at least consent to
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`the excerpts, and they have declined both requests.
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` JUDGE GREEN: Okay.
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` MS. HOLLIS: The next category is a report
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`on Neptune krill oil analyses dated in 2007, and this
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`we feel -- it contains information about NKO, another
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`product that Neptune contends practices the 351
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`patent, and we believe this includes information
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`that's inconsistent with their positions on how the
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`free fatty acid claim limitation should be interpreted
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`and their reasons for their proposed interpretation of
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`that claim limitation.
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` Those are the categories. In our meetings
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`and conferences with Neptune to talk about our
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`requests, they have raised a couple arguments for
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`refusing to produce.
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` Number one, they have said that they just
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`don't think they are relevant, and of course without
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`being able to discuss the contents of the documents
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`with you in detail, like I said, I'm a little
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`handcuffed to go through why we disagree, but they
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`certainly have not indicated we are in any way
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`mistaken or mooted our relevance arguments. We have a
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`clear dispute on that, and we think it should be up to
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`the Board to decide if they are relevant.
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` Their principal argument has been that the
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`documents are confidential, and this we argue is not a
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`valid reason for refusing to produce the documents.
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`We have an agreed protective order, and this is a
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`protective order that Neptune itself drafted and
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`proposed to us, and it specifically contemplates
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`production of its own confidential information
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`including documents that were produced in the ITC
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`proceeding, which all of these documents that I have
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`been talking about were produced in that proceeding.
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` So Neptune cannot now argue that its own
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`protective order is insufficient to protect its own
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`confidential information and use that argument to
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`shield that information from discovery altogether.
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` They have not identified any reason why the
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`submission of this information to the Board could ever
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`hurt them, or really explained why the standard
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`measures that Neptune itself agreed to for protecting
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`confidential information are insufficient here.
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` JUDGE GREEN: Okay. Anything you want to
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`add to that at this point?
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` MS. HOLLIS: Not at this point, but if you
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`will allow me, I would like a chance to respond to
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`anything that Neptune says.
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` JUDGE GREEN: I understand that.
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` Enzymotec, counsel for Enzymotec, do you
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`have anything to add at this point.
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` MS. HOLLAND: No, we don't have anything to
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`add. I would just say we are in complete agreement
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`with Aker Biomarine on this issue.
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` JUDGE GREEN: Patent owner, would you like
`
`to respond?
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` MS. CUNNINGHAM: Yes, Your Honor, thank
`
`you. There are a couple of issues here. Let me first
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`address the confidentiality issue.
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` All of the documents that are being
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`requested were produced in the ITC litigation between
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`the parties pursuant to the protective order that
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`governs the ITC investigation. As Your Honor may
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`recall, the use of confidential materials from the ITC
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`investigation is something that the parties discussed
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`early on in this proceeding. I myself raised this
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`issue with Your Honor during a May 28 Board call,
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`because we had been unsuccessful in securing a
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`reciprocal agreement with Petitioners to use
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`confidential materials from the ITC case.
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` JUDGE GREEN: It seems to me it wasn't that
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`you couldn't use the confidential materials. It was
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`that the two of you were having a hard time coming up
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`with a schedule and I wasn't going to enforce a
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`schedule on additional discovery that the two parties
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`had agreed to.
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` MS. CUNNINGHAM: Yes, Your Honor.
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` JUDGE GREEN: As I recall, that was really
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`the issue. It wasn't the confidentiality. It was
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`just I wasn't going to enforce an agreement that the
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`parties had made amongst themselves.
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` MS. CUNNINGHAM: I understand, Your Honor,
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`and I reference that call for a couple of reasons.
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`One is to just introduce the issue. And Ms. Hollis
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`specifically just stated now that our confidentiality
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`concerns were not a valid reason not to produce these
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`documents, but, in fact, that is exactly the position
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`that Aker's counsel took during that May 28 call.
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`They referred to the production of these materials as
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`a waiver of a protection to which they are entitled
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`under the ITC protective order, and they emphasized
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`that any such agreement to use confidential materials
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`needs to be reciprocal.
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` Petitioners never agreed to allow us to use
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`documents that were used in the ITC case that are
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`confidential. Exactly what they are asking us to do
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`now is what they refused to do a few months ago. And
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`the documents that they are requesting were marked
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`confidential in the ITC case because they contain very
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`sensitive proprietary details; for example, regarding
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`Neptune's manufacturing process.
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` The confidentiality of these documents was
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`never disputed by either Aker or Enzymotec in the ITC
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`case, and we do have, we think, legitimate concern
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`here regarding their production for a variety of
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`reasons.
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` The protective order that is in place here
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`is indifferent in important ways from the protective
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`order we had in the ITC case, and our understanding is
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`that the Board necessarily retains the right to
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`declassify whatever information may be marked as
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`confidential. So that is one difference.
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` Another difference is there is no type of
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`prosecution bar at all in this protective order, and
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`our understanding is that such prosecution bars are
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`not permitted in IPR protective orders.
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` So I don't want to -- I think Your Honor
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`understands the issue, and we think that we have a
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`right to maintain the confidentiality of these
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`documents. That's something that's of great concern
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`to Neptune.
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` With respect to the relevance of the
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`documents, we disagree that any of these documents are
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`relevant or that they show any kind of inconsistency
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`with the arguments that Neptune has presented in its
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`patent owner responses.
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` If I could just briefly run through the
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`category of documents that Ms. Hollis identified, the
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`first category I think she identified were documents
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`related to a repeat, an attempted repeat, of the
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`Beaudoin patent by Neptune employees.
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` Ms. Hollis stated that these were
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`regarding -- these documents regard the Beaudoin
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`repeat experiments that were submitted to the patent
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`office, but in fact they cover a lot more than just
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`the single experiment that was submitted to the patent
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`office in connection with, I believe, the 348 patent.
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` These documents involve an entire
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`deposition transcript from an ITC proceeding which
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`is -- I'm not sure whether or not the particular
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`experiment that was submitted to the patent office was
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`even mentioned, and that transcript contains a lot of
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`confidential information including about Neptune's
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`commercial manufacturing process.
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` It's not clear to me why Petitioners are
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`taking the position that this document relates to our
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`criticisms of the Beaudoin repeat submitted by their
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`experts in this case. None of the work that was done
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`by these Neptune employees is at issue in this
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`proceeding.
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` The second category Ms. Hollis identified
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`was an e-mail about a commercial product under
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`development at Neptune's subsidiary, ACASTI. Again, a
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`document about studies on a commercial product is very
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`far afield from the prior art issues that the Board is
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`considering here. We fail to see how this
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`information -- this study about a commercial product
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`is just -- we fail to see the connection to the prior
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`art at issue here.
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` Those same comments would also apply with
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`respect to the deposition transcript of the inventor,
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`Dr. Fontini Sampalis. Petitioner has identified for
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`us certain excerpts. We're not clear on whether
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`Petitioner would be seeking to compel production of
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`the entire transcripts or only those excerpts, but in
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`either case the excerpts primarily deal with Neptune's
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`commercial manufacturing process, which is not
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`relevant here and which, of course, is proprietary and
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`the details of which are very sensitive.
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` I would also note that those transcripts
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`span three separate days of testimony and that
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`Dr. Sampalis was testifying as a corporate witness for
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`Neptune under Federal Rules of Civil Procedure
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`30(b)(6), and so those topics have no relevance to
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`this proceeding.
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` And the last category of documents I
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`believe that Ms. Hollis referenced was a study about
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`NKO, and other Neptune commercial products, and she
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`said that this would be relevant to claim
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`construction. Claim construction is an issue of law.
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`I don't understand why the Board would be looking at
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`an external study on a commercial product in order to
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`interpret the claims of the patent, and certainly we
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`don't see how this goes to our claim construction
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`position.
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` JUDGE GREEN: Anything further?
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` MS. CUNNINGHAM: Not at this time, Your
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`Honor.
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` JUDGE GREEN: Ms. Hollis, would you like to
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`respond?
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` MS. HOLLIS: Yes, Your Honor.
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` On confidentiality, again they are saying
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`that the reason, the primary reason, why they are not
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`agreeing to produce this information is because it's
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`confidential. Well, again, they were the ones who
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`drafted and agreed to the protective order that is
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`designed to protect confidentiality interests.
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` If for some reason that protective order
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`was insufficient, the time to address those
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`insufficiencies would have been before they submitted
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`it to Your Honor. It doesn't make sense now. Nothing
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`has changed now, other than we have identified
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`documents that they don't like, to somehow change the
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`circumstances around their confidential information.
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` JUDGE GREEN: What about Ms. Cunningham's
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`argument that they had tried to come up with a
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`schedule that some of these confidential documents
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`should be produced by both parties and that the
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`parties were having a hard time agreeing to that and
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`that specifically that you did not want to produce
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`certain documents?
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` MS. HOLLIS: Right, Your Honor. As I
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`recalled, my understanding is consistent with what
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`Your Honor said, which is that the discussion on that
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`conference call was mostly about their request that
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`you compel a schedule to agree to something or to
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`enforce a separate agreement.
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` There is no inconsistency between what we
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`were saying in that circumstance and what we are
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`asking for now. Back then Neptune wanted us to give
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`them a blanket agreement to use either all of the
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`confidential documents that had been produced in that
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`ITC case or a list of select documents, but what they
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`wanted to do was skip over the discovery rules in the
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`IPR and not have to explain why the documents were
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`relevant before we would agree to allow them to use
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`those documents, to produce them.
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` We consistently asked them why do you think
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`these documents are relevant. And we noted they are
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`confidential, so we, at minimum, would at least like
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`to hear from you why are they relevant, and they
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`refused over and over again to tell us even a single
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`reason why the specific documents they were asking
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`for, much less all of the documents they originally
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`requested, were relevant.
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` There's no inconsistency here. We have in
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`writing and in conference calls identified very
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`specific reasons why the documents we are seeking are
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`relevant, and the bottom line, Your Honor, is that
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`what they seem to be arguing is a tit for tat. They
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`think they shouldn't have to produce relevant
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`discovery to us because they think -- they have an
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`impression that we didn't give them the answer they
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`wanted on a similar request before, and this tit for
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`tat argument I don't think is relevant or dispositive
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`of our request here.
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` JUDGE GREEN: Okay. I understand.
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` MS. HOLLIS: They also argued that -- the
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`only reasons why they are saying the protective order
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`is insufficient, as I'm hearing it, is, number one, it
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`allows the Board, if it relies on some of the
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`confidential information, to disclose that in opinions
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`and so forth, and, number two, that there isn't really
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`a provision barring prosecution counsel from accessing
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`these documents.
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` Well, Your Honor, I think those arguments
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`apply to every single standard protective order that
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`has been entered in every IPR, and if these reasons
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`were sufficient to allow them to not produce relevant
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`discovery, well, then I guess everyone could stand
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`behind those reasons, and I don't think that's really
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`where the process should go.
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` And I have to just say again they were the
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`ones that agreed to this in the first place. I don't
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`see any reason why it's suddenly insufficient.
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` JUDGE GREEN: What about the relevancy
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`argument?
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` MS. HOLLIS: On relevancy they -- as I
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`understood Ms. Cunningham, she said she doesn't think
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`that the Beaudoin patent repeat discussed in the
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`Pierre St. John deposition is relevant because those
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`experiments were not at issue here and they cover a
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`lot more than the single Beaudoin experiment that was
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`submitted to the Board.
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` Number one, this is the first time we're
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`hearing of these arguments. They didn't discuss them
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`in our conferences before, but, more importantly, the
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`course is relevant. This is Neptune's own repeat of
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`the Beaudoin prior art process, which it represented
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`it did faithfully to the patent office in order to get
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`its patent. How Neptune conducted those experiments
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`that it said were done correctly is relevant to their
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`criticisms and their assertions that we have done our
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`experiments incorrectly.
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` The other criticisms they have on the
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`requested documents seem to boil down to well, they
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`were about commercial products, not the patents. I
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`think that's what they are saying on the study of
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`Capri and the NKO document, the analysis there.
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` What they are omitting is that the
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`commercial products are ones that Neptune has alleged
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`practiced the claimed invention, so its own statements
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`and representations in documents about the embodiment
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`of the claimed invention in their view are relevant to
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`our arguments about that claimed invention here.
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`They're the typical information that's relevant and
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`discoverable, and they haven't explained any reason
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`why the reasons I have given previously do not apply.
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` JUDGE GREEN: I think I understand both
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`parties' positions. I'm going to put you on hold and
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`confer with the panel.
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` (Short recess.)
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` JUDGE GREEN: Hello. This is Judge Green
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`again. Do I still have counsel for Aker?
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` MS. HOLLIS: Yes, Your Honor.
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` JUDGE GREEN: Do I still have counsel for
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`Enzymotec?
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` MS. HOLLAND: Yes, Your Honor.
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` JUDGE GREEN: And do I still have counsel
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`for Neptune?
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` MR. FARMER: Yes, Your Honor.
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` MS. CUNNINGHAM: Yes, Your Honor.
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` JUDGE GREEN: It appears there are a lot of
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`issues here and a lot going on. I think the easiest
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`way to do this is go ahead and authorize Aker to file,
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`because of the four different categories, a 15-page
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`motion. And, Aker, when can you get that in?
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` MS. HOLLIS: I think next week we could do
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`that easily.
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` JUDGE GREEN: Can you give me a date?
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` MS. HOLLIS: Sure. Let me just look at the
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`calendar quickly. Thursday, the 4th.
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` JUDGE GREEN: Thursday, the 4th?
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` MS. HOLLIS: Yes.
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` JUDGE GREEN: And in that regard, I point
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`you to the Garman decision, which was in IPR
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`2012-0001. It's on our website as a representative
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`order. In particular, I would like to point you to
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`Factor 1 where they talk about the difference between
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`relevant and useful because it not only has to be
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`relevant, it has to be useful to show something of a
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`substantive value to a contention that you're making.
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` MS. HOLLIS: Yes, Your Honor.
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` JUDGE GREEN: Neptune, I am authorizing a
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`seven-page response. Will that be sufficient do you
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`think?
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` MS. CUNNINGHAM: Yes, Your Honor.
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` JUDGE GREEN: And when can you get that in
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`by?
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` MS. CUNNINGHAM: If we submit it by the
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`following Wednesday, the 10th, is that acceptable?
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` JUDGE GREEN: Wednesday, the 10th, I would
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`think -- if you want a week, I can make it the 11th
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`and that way you have a little bit of wiggle room. I
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`think a week is reasonable.
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` MS. CUNNINGHAM: Thank you, Your Honor. We
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`appreciate that.
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` JUDGE GREEN: Since it's four different
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`categories and there is a lot going on here, I would
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`like to see it in writing before I make a ruling on
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`it.
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` At this point anything additionally, Aker?
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`Aker, do you have anything additionally at this point?
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` MS. HOLLIS: I'm here.
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` JUDGE GREEN: Anything else at this time,
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`Ms. Hollis?
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` MS. HOLLIS: No. I apologize. It was
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`quiet and I didn't hear anything after you asked
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`Ms. Cunningham for her response.
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` JUDGE GREEN: You know, the telephone is
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`great, but, again, all of these conference systems are
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`sometimes a little bit buggy.
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` Okay. Anything from counsel for Enzymotec?
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` MS. HOLLAND: No, Your Honor.
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` JUDGE GREEN: Anything from counsel for
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`Neptune?
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` MS. CUNNINGHAM: No, Your Honor.
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` JUDGE GREEN: Thank you all very much.
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`Have a good afternoon. This call is adjourned. Thank
`
`you.
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` (The conference call adjourned at 4:33
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`p.m.)
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`CERTIFICATE OF SHORTHAND REPORTER - NOTARY PUBLIC
`
` I, Cynthia A. Whyte, the officer before whom the
`
`foregoing proceedings were taken, do hereby certify
`
`that the foregoing transcript is a true and correct
`
`record of the proceedings; that said proceedings were
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`taken by me stenographically and thereafter reduced to
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`typewriting under my supervision; and that I am
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`neither counsel for, related to, nor employed by any
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`of the parties to this case and have no interest,
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`financial or otherwise, in its outcome.
`
` IN WITNESS WHEREOF, I have hereunto set my hand
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`and affixed my notarial seal this 28th day of August,
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`2014.
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`My commission expires July 15, 2015.
`
`-----------------------------
`
`CYNTHIA A. WHYTE
`
`NOTARY PUBLIC IN AND FOR THE
`
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