UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`AKER BIOMARINE AS and
`ENZYMOTEC LTD. and ENZYMOTEC USA, INC.
`
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES, INC.
`Patent Owner
`
`________________
`Case IPR2014-000031
`Patent 8,278,351 B1
`________________
`
`PETITIONER’S REPLY IN SUPPORT OF
`MOTION FOR ADDITIONAL DISCOVERY
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2014-00556 has been joined with this proceeding.
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`AKER BIOMARINE AS and
`ENZYMOTEC LTD. and ENZYMOTEC USA, INC.
`
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES, INC.
`Patent Owner
`
`________________
`Case IPR2014-000031
`Patent 8,278,351 B1
`________________
`
`PETITIONER’S REPLY IN SUPPORT OF
`MOTION FOR ADDITIONAL DISCOVERY
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2014-00556 has been joined with this proceeding.
`
`
`
`Reply re Motion For Additional Discovery
`Case No. IPR2014-00003
`
`
`
`I.
`
`TABLE OF CONTENTS
`
`Page
`PO Offers No Valid Basis For Refusing Production ................................. 1
`A.
`Confidentiality Is No Basis For PO To Withhold Its Documents ........... 1
`
`B.
`
`PO Does Not Rebut Satisfaction Of The Garmin Standards ................... 2
`
`C.
`AKBM Cannot Generate Equivalent Information ..................................... 4
`II. The Board Should Not Expunge Any Part Of AKBM’s Motion ............... 4
`
`
`
`i
`
`
`
`I.
`
`Reply re Motion For Additional Discovery
`Case No. IPR2014-00003
`PO Offers No Valid Basis For Refusing Production
`A.
`Confidentiality Is No Basis For PO To Withhold Its Documents
`PO continues to oppose discovery because its documents are confidential, but
`
`does not dispute that confidentiality is not a valid basis for opposing discovery. The
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`AIA, IPR rules, and protective order PO drafted specifically contemplate discovery of
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`confidential information. See 35 U.S.C. § 316(a)(7); 37 C.F.R. 42.54; Paper 60; Ex.
`
`2033. PO does not explain why an exception is justified. Its confidentiality objections
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`should be overruled on this basis alone.
`
`Perhaps seeing the weakness in its confidentiality arguments, PO resorts to
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`misleading claims about the ITC and IPR protective orders. PO states it produced the
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`requested documents as “CBI” “subject to an ITC protective order.” Op. (Paper 83)
`
`at 2. But PO does not explain why this matters. It does not. The ITC protective order
`
`does not limit Petitioner’s discovery requests in the IPR, or the Board’s authority to
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`grant them, and PO does not argue to the contrary. PO is wrong that “the parties
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`agreed that [the] IPR protective order would cover CBI documents only by mutual
`
`agreement.” Id. at 4. The order expressly covers ITC documents “that the parties
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`agree in writing, or the Board authorizes, may be provided.” Ex. 2033 at ¶6.
`
`PO’s complaints that the requested documents are “voluminous” and may get
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`“into the hands of [Petitioner’s] prosecuting attorneys” are disingenuous. Petitioner
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`offered to use excerpts of the documents and wall off its prosecution counsel; PO did
`
`not agree. See Ex. 1110. And PO still has not shown why public disclosure of the
`
`
`
`
`
`Reply re Motion For Additional Discovery
`Case No. 2014-00003
`documents would harm PO. Stating that the documents concern topics (e.g.,
`
`“research,” “sales”) does not explain how they could be used to PO’s detriment.2
`
`B.
`PO Does Not Rebut Satisfaction Of The Garmin Standards
`PO’s relevance arguments also lack merit. PO cannot reasonably deny that
`
`Petitioner will use the documents to rebut PO’s arguments (i.e., that Beaudoin
`
`includes a heat step that would destroy all Claimed Phospholipids, and that claims 5
`
`and 28 require 2.5–7.5% free fatty acids because such “low” levels are “consistent
`
`with” presence of Claimed Phospholipid). PO does not explain why, if the documents
`
`are not relevant, it is so concerned the Board will use them. PO should be ordered to
`
`produce the documents so the Board can judge what they prove.
`
` CaPre Email (RX-0456C): PO admits this email shows a study of krill oil
`
`stability when exposed to heat. PO claims it nonetheless is not relevant to its
`
`arguments that krill oil phospholipids degrade when subjected to heat, because the
`
`krill oil involved was not Beaudoin krill oil and might have different “water content”
`
`or other characteristics, and the temperature was “below 125°C.” Op. at 5. PO does
`
`not say what the temperature was, or how long it was applied, or provide any evidence
`
`
`2 PO’s “tit for tat” theory fails. Petitioner’s rejection of PO’s proposal for blanket use
`
`of CBI documents is not inconsistent with its request for specific documents. PO was
`
`not “barred” from getting discovery. Op. at 2. It refused to explain how the requested
`
`documents were relevant, then abandoned its request for them. See Exs. 1111, 1112.
`
`
`
`2
`
`
`
`Reply re Motion For Additional Discovery
`Case No. 2014-00003
`that the alleged distinctions matter. PO’s arguments cannot be reconciled with its own
`
`reliance on soybean oil with undisclosed water content, nor its arguments about what
`
`happens to soybean oil at temperatures even below 100° C. Ex. 2059 at ¶18.
`
`Sampalis Deposition Transcript: PO’s arguments about the Sampalis
`
`transcript are red herrings. Petitioner does not seek to use the Sampalis transcript to
`
`show the inventor’s “subjective mindset or opinions.” Dr. Sampalis is an officer of
`
`PO and testified as a corporate designee about the ’351 patent. Her admissions are
`
`PO’s admissions. PO fears the Board might publicly disclose its confidential “sales,
`
`distribution chain, and business plan[]” information. Op. at 6. Petitioner does not
`
`intend to rely on this information, so this supposed concern is unfounded.
`
`Report on NKO (RX-0398C): PO argues the NKO report is irrelevant
`
`because it is not intrinsic evidence. Neither is PO’s theory that “a low free fatty acid
`
`level [of 2.5–7.5%] is consistent with…recovery of intact phospholipids,” however,
`
`which is what the NKO report rebuts. Ex. 2059 at ¶37.3
`
`
`3 PO suggests NKO does not practice claims 5 and 28 as PO interprets them. Op. at
`
`7. If true, this is another reason the Board should reject PO’s proposed construction.
`
`The ’351 patent states that “Neptune Krill Oil” is “the present invention” and
`
`discloses no other embodiments. Ex. 1001 at 19:46. A construction that excludes the
`
`preferred embodiment is “rarely, if ever correct.” Anchor Wall Sys., Inc. v. Rockwood
`
`Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003).
`
`
`
`3
`
`
`
`Reply re Motion For Additional Discovery
`Case No. 2014-00003
`St-Jean Deposition and Exhibits 4, 5: PO has no response for why these
`
`documents are not relevant and useful other than saying that Mr. St-Jean “admitted”
`
`his process “did not faithfully repeat” Beaudoin. Op. at 7. Putting aside whether this
`
`self-serving statement from PO’s employee is an “admission,” PO offers no
`
`explanation of what Mr. St-Jean allegedly did differently from Beaudoin or how it
`
`supposedly affected the results. Nor does PO provide any explanation of why, if the
`
`process was a “failed attempt” at repeating Beaudoin, PO had the resulting “Beaudoin
`
`oil” analyzed. Ex. 1103 at 44:24–45:6.
`
`C.
`AKBM Cannot Generate Equivalent Information
`PO claims Petitioner’s requests for the CaPre email and NKO Report do not
`
`meet Garmin Factor 3 because Petitioner allegedly could have tested its “own krill oil”
`
`or NKO to obtain “equivalent” information. Op. at 6–7. Any testing Petitioner would
`
`do, PO would undoubtedly nitpick, as it has done with Petitioner’s other tests. PO
`
`cannot so criticize its own tests. The importance of a party’s own documents that are
`
`inconsistent with its own positions is a key tenet of the discovery framework for IPRs,
`
`which mandates production of such “routine” evidence. 37 C.F.R 42.51(b).
`
`II. The Board Should Not Expunge Any Part Of AKBM’s Motion
`PO cites no basis for expunging any part of Petitioner’s motion. Illumina, Inc. v.
`
`Trustees of Columbia Univ., IPR2012-00006, Paper 34 is inapposite. It dealt with a filing
`
`that exceeded the prescribed content of Mandatory Notices. Id. The rule prescribing
`
`the content of Petitioner’s motion requires “[a] full statement of the reasons for the
`
`
`
`4
`
`
`
`Reply re Motion For Additional Discovery
`Case No. 2014-00003
`relief requested, including a detailed explanation of the significance of the evidence
`
`including material facts, and the governing law, rules, and precedent.” 37 C.F.R.
`
`42.22(a) (emphasis). This is exactly what Petitioner provided. Any discussion of
`
`“merits” was inextricably linked to the discovery issues. Under Garmin, Petitioner
`
`must show “beyond speculation that in fact” it will obtain something “useful.”
`
`Garmin, IPR2012-0001, Paper 26 at 6. Petitioner could not discuss the contents of the
`
`documents, so it had to use other evidence. As Petitioner explained, one reason it is
`
`not speculating that the requested documents are inconsistent with PO’s positions is
`
`that other documents show similar inconsistencies. In any event, PO’s arguments are
`
`moot: if AKBM got “additional opportunity for merits argument” (Op. at 8–9), so did
`
`PO. PO claims its 15 allotted pages were “not sufficient” (id. n.4) but used only 12.4
`
`September 22, 2014
`
`
`
`Respectfully submitted,
`By: /s/ Amanda J. Hollis
`
`
`
`4 PO makes a new merits argument in its opposition: “[I]f an extract does not have
`
`detectable amounts of Claimed Phospholipid, one cannot conclude [it] is present.”
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`Op. at 10. The Board “do[es] not read the doctrine of inherency so strictly.” Ariosa
`
`Diagnostics v. Isis Innov. Ltd., IPR2012-00002, Paper 166 at 33 (Sep. 2, 2014). “[A]ll that
`
`is required is that the claimed product is the natural result flowing from the operation
`
`as taught in the prior art,” which is not overcome by evidence that the product in
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`some instances “cannot necessarily be detected.” Id. at 32–33.
`
`
`
`5
`
`
`
`Reply re Motion For Additional Discovery
`Case No. 2014-00003
`
`CERTIFICATE OF SERVICE
`
`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) that a complete
`
`copy of this PETITIONER’S REPLY IN SUPPORT OF MOTION FOR
`
`ADDITIONAL DISCOVERY is being served electronically via e-mail (as consented
`
`to by the Patent Owner), on September 22, 2014, the same day as the filing of the
`
`above-identified document in the United States Patent and Trademark Office
`
`(USPTO), upon:
`
`
`J. Dean Farmer, Ph.D.
`dfarmer@cooley.com
`zpatdcdocketing@cooley.com
`Cooley LLP
`Attn: Patent Group
`1299 Pennsylvania Ave., NW, Ste.
`700
`Washington, D.C.
`Tel: (617) 937-2371
`Fax: (202) 842-7899
`
`
`Elizabeth J. Holland
`eholland@goodwinprocter.com
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Telephone: (212) 813-8800
`Facsimile: (212) 355-3333
`Reg. No. 47,657
`
`
`
`Jonathan G. Graves
`jgraves@cooley.com
`zpatdcdocketing@cooley.com
`Cooley LLP
`Attn: Patent Group
`
`1299 Pennsylvania Ave., NW, Ste. 700
`Washington, D.C.
`Tel: (617) 937-2370
`Fax: (202) 842-7899
`
`
`
`Cynthia Lambert Hardman
`chardman@goodwinprocter.com
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`Telephone: (212) 813-8800
`Facsimile: (212) 355-3333
`Reg. No. 53,179
`
`/John Mitchell Jones/
`J. Mitchell Jones, Ph.D. 44,174
`
`
`
`6
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