`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ENZYMOTEC LTD.,
`Petitioner
`
`
`v.
`
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.,
`Patent Owner
`
`
`
`IPR2014-00556
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. 315(c) AND
`37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`I.
`
`Enzymotec Ltd. (“Enzymotec”) respectfully submits this Motion for Joinder,
`
`together with a Petition for Inter Partes Review of U.S. Patent No. 8,278,351,
`
`Petition IPR2014-00556. Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
`
`42.122(b), Enzymotec requests institution of an inter partes review and joinder
`
`with the inter partes review concerning the same patent in Aker Biomarine AS v.
`
`Neptune Technologies and Bioressources, Inc., Case IPR2014-00003 (the “Aker
`
`IPR”), which was instituted on March 24, 2014. Enzymotec’s request for joinder
`
`is timely. It is also narrowly-tailored to the same claims, prior art, and grounds of
`
`unpatentability that are the subject of Aker’s IPR. In addition, Enzymotec is
`
`willing to streamline discovery and briefing. Accordingly, joinder is appropriate
`
`because it will not prejudice the parties to the Aker IPR and will promote the
`
`efficient resolution of the question of validity of a patent in a single proceeding.
`
`Absent joinder, Enzymotec will be prejudiced because its interests may not be
`
`adequately represented in the Aker IPR.
`
`II. MATERIAL FACTS
`
`Neptune Technologies and Bioressources, Inc. (“Neptune” or “Patent
`
`Owner”) owns U.S. Patent 8,278,351 (the “’351 Patent”). On October 2, 2012,
`
`Neptune sued Aker and Enzymotec in district court for alleged infringement of this
`
`patent. (Neptune et al. v. Aker et al., D. Del., 1:12cv1252; Neptune et al. v.
`
`
`
`1
`
`
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`Enzymotec et al., D. Del., 1:12cv1253.) On January 29, 2013, Neptune filed a
`
`complaint with the International Trade Commission against Aker, Enzymotec, and
`
`others alleging violation of 19 U.S.C. § 1337 by importation into the U.S. articles
`
`that allegedly infringe the ’351 patent. (ITC Investigation No. 337-TA-887, the
`
`“ITC Investigation.”) Aker and the additional parties to the ITC Investigation have
`
`settled; Enzymotec remains a respondent in that proceeding.1 On June 13, 2013
`
`and May 13, 2013, respectively, the district court cases against Aker and
`
`Enzymotec were stayed pending resolution of the ITC Investigation. On
`
`December 16, 2014, the ITC Investigation was stayed, pending the parties’ efforts
`
`to conclude a settlement agreement.
`
`On March 24, 2014, the Board instituted Aker’s IPR on two grounds of
`
`unpatentability: (1) anticipation by WO 00/23546 to Beaudoin (“Beaudoin I”); and
`
`(2) obviousness over Fricke et al., Lipid, Sterol, and Fatty Acid Composition of
`
`Antarctic Krill, LIPIDS, Vol. 19, No. 11, pp. 821-827 (“Fricke”), L.D. Bergelson,
`
`Lipid Biochemical Preparations, Elsevier/North-Holland Biomedical Press
`
`(“Bergelson”), Japanese Patent Application Publication No. Hei 8-231391
`
`(“Yasawa”), Bio and High Technology Announcement (“Itano”), and WHO News
`
`
`Enzymotec USA, Inc., Enzymotec Ltd.’s subsidiary, also remains as a
`1
`
`Respondent in the ITC Investigation.
`
`
`
`2
`
`
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`and Activities, Nutritional Value of Antarctic Krill (“the WHO Bulletin”).
`
`(Institution of Inter Partes Review, Aker IPR Paper No. 22, March 24, 2014.)
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
`
`proceedings, e.g. an inter partes review (IPR) may be joined with another inter
`
`partes review. 37 C.F.R. § 42.122(a). The Board has discretion to join parties to
`
`an existing inter partes review. 35 U.S.C. § 315(c). In deciding whether to
`
`exercise its discretion, the Board considers factors including: (1) the movant’s
`
`reasons why joinder is appropriate; (2) whether the new petition presents any new
`
`grounds of unpatentability; (3) what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) how briefing and discovery may be
`
`simplified. Dell Inc. v. Network-1 Security Solutions, Inc., Decision on Motion for
`
`Joinder, IPR2013-00385, Paper No. 17 at 4 (July 29, 2013).
`
`B. Enzymotec’s Motion For Joinder is Timely
`
`The instant Petition and this Motion for Joinder are timely under 35 U.S.C. §
`
`315(c) and 37 C.F.R. § 42.122(b). While, as a general proposition, inter partes
`
`review may not be instituted more than one year after the date on which a
`
`petitioner is served with a complaint alleging infringement of the patent-at-issue
`
`(35 U.S.C. § 315(b)), the one year period does not apply when a petition for inter
`
`
`
`3
`
`
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`partes review is accompanied by a motion for joinder filed within one month of
`
`institution of the inter partes review for which joinder is requested. 37 C.F.R. §
`
`42.122(b). This Motion for Joinder and the accompanying Petition are timely, as
`
`they are submitted within one month of the March 24, 2014 institution of the Aker
`
`IPR.
`
`C. Joinder is Appropriate
`
`Joinder is appropriate because Enzymotec will be unduly prejudiced if
`
`joinder is denied. As noted above, Enzymotec remains a respondent in the ITC
`
`Investigation, wherein Neptune is asserting the ’351 patent against Enzymotec.
`
`That Investigation was stayed in December 2013 pending the parties’ efforts to
`
`conclude a settlement agreement, but to date the parties have been unable to reach
`
`settlement. Accordingly the stay in the ITC Investigation will be lifted on April
`
`14, 2014, and the hearing will be held beginning April 28, 2014. (Order No. 43,
`
`Setting Amended Procedural Schedule, ITC Investigation 337-TA-877.)
`
`At this stage, in order to challenge Neptune’s claims in an inter partes
`
`review, the only option available to Enzymotec is to file its petition and
`
`simultaneously request joinder to Aker’s IPR pursuant to 37 C.F.R. § 42.122(b).
`
`Therefore, absent joinder, Enzymotec’s petition for inter partes review would be
`
`barred. Enzymotec would be prejudiced if the Board refuses joinder, as its
`
`interests may not be adequately represented in the Aker IPR.
`
`
`
`4
`
`
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`In contrast, neither Aker nor Neptune would suffer prejudice if the Board
`
`permits joinder. Enzymotec’s Petition is limited to the same subset of claims of
`
`the ’351 patent that are at issue in Aker’s IPR, and it presents the same two
`
`grounds of unpatentability on which the Aker IPR was instituted. The Board
`
`instituted inter partes review of claims 1, 3-6, 9, 12, 13, 19-24, 26-29, 32, 35, 36,
`
`and 42-46 on the ground of anticipation by Beaudoin I. (Institution of Inter Partes
`
`Review, the Aker IPR, Paper No. 22 at pp. 8-16 (March 24, 2014).) The Board
`
`also instituted inter partes review of these same claims, plus claims 2 and 25, on
`
`the ground of obviousness over Fricke, Bergelson, Yasawa, Itano, and the WHO
`
`Bulletin. (Id. at pp. 21-25.)
`
`Enzymotec’s Petition includes the identical obviousness and anticipation
`
`grounds for the same claims as in Aker’s IPR, and is supported by the identical
`
`prior art and prior art combinations and the identical expert declarations that Aker
`
`relied on in its petition. Enzymotec’s Petition additionally asserts that claims 2 and
`
`25 are also anticipated by Beaudoin I, but this argument is based on the same
`
`evidence already of record in the Aker IPR. Thus substantive issues in the Aker
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`IPR would not be unduly complicated by joining Enzymotec’s proceeding because
`
`the joinder does not introduce any new prior art, expert declarations, or grounds of
`
`unpatentability into the Aker IPR. For this reason, Enzymotec respectfully submits
`
`
`
`5
`
`
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`that the Patent Owner would not need a substantial amount of time to complete its
`
`Preliminary Patent Owner’s Response, should it choose to file one.
`
`Accordingly Enzymotec believes that joinder would have little, if any,
`
`impact on the trial schedule set in Aker’s IPR, and will require substantially no
`
`additional time or cost on the Patentee’s part. Given that Aker and Enzymotec will
`
`be addressing the same prior art and same bases for rejection of the claims at issue
`
`using the same experts, Enzymotec envisions virtually no differences in positions.
`
`Because the experts are the same, no additional depositions are needed, and
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`Enzymotec is willing to have Aker take lead at depositions, with Enzymotec asking
`
`limited, supplemental questions (if any). Further, Enzymotec will seek to
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`cooperate with Aker to simplify briefing and discovery whenever possible, and is
`
`amenable to consolidated filings. Conducting the proceedings in this manner
`
`should minimize cost, complication, and delay.
`
`Joinder in this case also will not impact the Board’s ability to complete its
`
`review in a timely manner. 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c)
`
`provide that the inter partes review should be completed, and the Board’s final
`
`decision issued, within one year of institution of the review. Here, since the
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`Petition raises no new grounds of unpatentability or prior art, joinder should not
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`unduly affect the Board’s ability to issue its final determination within the
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`statutorily-defined time limit.
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`
`
`6
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`
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`IV. CONCLUSION
`
`U.S. Patent 8,278,351
`Petition for Inter Partes Review
`Motion for Joinder
`
`For the foregoing reasons, Enzymotec respectfully requests that the Board
`
`institute its Petition for Inter Partes Review of U.S. Patent 8,278,351 (IPR2014-
`
`00556) and join this proceeding with Aker Biomarine AS v. Neptune Technologies
`
`and Bioressources, Inc. (IPR2014-00003).
`
`Although it is believed that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
`
`required for this Motion to Deposit Account No. 11-0600.
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`
`
`Dated: April 4, 2014
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`Respectfully submitted,
`
`
`
`
`
`
`/Elizabeth J. Holland/
`Elizabeth J. Holland ((Reg. No. 47,657)
`Cynthia Lambert Hardman (Reg. No.
`53,179)
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004-1007
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`
`Counsel for Enzymotec Ltd.
`
`7
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`
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`
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`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “MOTION FOR JOINDER UNDER
`
`35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122,” was served in its entirety
`
`by Federal Express overnight service, Tracking No. 798451879290, on this 4th day
`
`of April 2014 on the following:
`
`
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue, NW
`Suite 700
`Washington, DC 20004
`
`Patent owner’s correspondence address
`of record for U.S. Patent 8,278,351
`
`
`Dated: April 4, 2014
`
`
`
`
`
`/Cynthia Lambert Hardman/
`Elizabeth J. Holland ((Reg. No. 47,657)
`Cynthia Lambert Hardman (Reg. No.
`53,179)
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`Tel: (212) 425-7200
`Fax: (212) 425-5288
`
`Counsel for Petitioner Enzymotec Ltd.
`
`
`
`
`
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`
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