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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AKER BIOMARINE AS
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
`
`Patent No. 8,278,351
`Filing Date: July 25, 2011
`Issue Date: October 2, 2012
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`
`
`Title: NATURAL MARINE SOURCE PHOSPHOLIPIDS COMPRISING
`POLYUNSATURATED FATTY ACIDS AND THEIR APPLICATIONS
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`
`
`
`
`Inter Partes Patent Review No.: IPR2014-00003
`Petition Filed: October 1, 2013
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`1
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`Case No.: IPR2014-0003
`Patent Owner’s Mandatory Notices
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8, the patent owner, NEPTUNE TECHNOLOGIES AND
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`BIORESSOURCES INC., 545 Promenade du Centropolis, Laval, Québec, Canada H7T 0A3
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`(“Patent Owner” or “Neptune”), hereby submits the following mandatory notices in response
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`to the Petition for Inter Partes Patent Review of United States Patent No. 8,278,351 filed on
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`October 1, 2013:
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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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`
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`U.S. Patent No. 8,278,351 (“the ‘351 Patent”) is being asserted in two patent
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`litigations 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 are stayed, pending reexamination
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`(see infra).
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`
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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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`2
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`Case No.: IPR2014-0003
`Patent Owner’s Mandatory Notices
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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 is active.
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`
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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 is in progress.
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`
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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 are
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`stayed, pending reexamination (see infra).
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`
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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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`
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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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`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 are stayed,
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`pending reexamination (see supra).
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`3
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`Case No.: IPR2014-0003
`Patent Owner’s Mandatory Notices
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`The ‘675 Patent was asserted in the International Trade Commission. The
`
`
`
`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 is active.
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`
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`The following currently pending U.S. patent applications claim priority to the ‘351
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`Patent: U.S. Patent Application No. 13/280,182, filed October 24, 2011 and U.S. Patent
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`Application No.13/750,663, filed January 25, 2013.
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`3.
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`
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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)
`saltieri@cooley.com
`zpatdcdocketing@cooley.com
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`Cooley LLP
`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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`BACK-UP COUNSEL
`J. Dean Farmer, Ph.D. (Reg. No. 57,917)
`dfarmer@cooley.com
`zpatdcdocketing@cooley.com
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`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (617) 937-2370
`Fax: (202) 842-7899
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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. The Patent Owner consents to electronic service by e-mail at the e-mail
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`addresses provided above, which include both individual e-mail addresses and a general
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`docketing e-mail address.
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`4
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`The Office is authorized to charge fee deficiencies to Deposit Account 50-1283.
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`Case No.: IPR2014-0003
`Patent Owner’s Mandatory Notices
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`By:
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`
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`Respectfully submitted,
`COOLEY LLP
`
`/ Stephen L. Altieri /
`Stephen L. Altieri, Ph.D.
`Reg. No. 63,133
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`DATE: OCTOBER 22,2013
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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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`136560 v2/BN
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`5
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`Case No.: IPR2014-0003
`Patent Owner’s Mandatory Notices/Power of Attorney Service
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`CERTIFICATE OF SERVICE
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`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) and 42.206(b) that a complete copy of:
` Patent Owner’s Mandatory Notices Under 37 C.F.R. § 42.8;
` Patent Owner’s Power of Attorney; and
` this Certificate of Service
`
`
`are being served electronically (as consented to by the Petitioner), on the 22nd day of
`October, 2013, the same day as the filing of the above-identified documents in the United
`States Patent and Trademark Office (USPTO), upon:
`
`
`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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`
`
`/Stephen L. Altieri/
`Stephen L. Altieri, Ph.D.
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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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`
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`137405 v1/BN