Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 15
`Entered: June 19, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ENZYMOTEC LTD. and ENZYMOTEC USA, INC.
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
`_______________
`
`Case IPR2014-00556
`Patent 8,278,351
`_______________
`
`
`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`

`

`Case IPR2014-00556
`Patent 8,278,351
`
`
`A conference call was held on Thursday, June 12, 2014, among Elizabeth
`
`Holland, representing Petitioner in this case, Enzymotec Ltd. and Enzymotec USA,
`
`Inc. (“Enzymotec”); Amanda Hollis, representing Petitioner in IPR2014-00003,
`
`Aker Biomarine AS (“Aker”); Steve Altieri, representing Patent Owner in both
`
`cases, Neptune Technologies & Bioresources, Inc, (“Neptune”); and Judges Green,
`
`Bonilla, and Snedden. A court reporter was present on the call, and a transcript of
`
`the call will be filed by Patent Owner. Enzymotec requested the call to discuss
`
`obtaining authorization to file a short reply to Patent Owner’s Opposition to
`
`Enzymotec’s Motion for Joinder (Paper 11), as well as to request guidance as how
`
`Enzymotec should apprise the Board as to the agreement they have reached with
`
`Aker as to how the two Petitioners will cooperate in the event that the instant
`
`proceeding is joined with IPR2014-00003.
`
`
`
`We began with a discussion of Neptune’s Motion for Additional Discovery
`
`in IPR2014-00003 (IPR2014-00003, Paper 55). In Aker’s Opposition to that
`
`Motion (IPR2014-00003, Paper 61), Aker stated that the parties had conferred, and
`
`Aker had agreed to produce the requested laboratory notebooks and reports. Id. at
`
`2. Thus, according to Aker, Neptune’s Motion for Additional Discovery should be
`
`denied as moot. Id. at 6. After our inquiry during the conference call, Neptune
`
`agreed that an agreement had been reached between itself and Aker regarding the
`
`additional discovery. We thus deny as moot Neptune’s Motion for Additional
`
`Discovery in IPR2014-00003.
`
`
`
`We also noted that the panel had a conflict with the current oral hearing date
`
`in IPR2014-00003, currently scheduled for October 21, 2014 (IPR2014-0003,
`
`Paper 23), and asked if any of the parties had an issue with rescheduling the oral
`
`hearing date, assuming an oral hearing is requested, to Friday, October 17, 2014.
`
`All three parties indicated that they were not aware of any potential conflicts with
`
` 2
`
`
`
`
`
`

`

`Case IPR2014-00556
`Patent 8,278,351
`
`
`that hearing date. Thus, DUE DATE 7 in IPR2014-00003 is moved from Tuesday,
`
`October 21, 2014, to Friday, October 17, 2014.
`
`
`
`We then turned to the reasons as to why Enzymotec had requested the call.
`
`As to Enzymotec’s request to file a reply to Patent Owner’s Opposition to
`
`Enzymotec’s Motion for Joinder (Paper 11) in the instant proceeding, Enzymotec
`
`noted that Neptune argued in its Opposition that joinder would allow Enzymotec to
`
`evade its contractual obligations. Paper 11, 10. We noted that we would not
`
`consider issues of contract law in determining whether joinder was appropriate
`
`under the statutes and regulations that govern inter partes review. Accordingly,
`
`Enzymotec stated it no longer wished to seek authorization to file a reply to
`
`Neptune’s Opposition for joinder.
`
`
`
`Enzymotec also inquired as to the best way to inform the Board as to the
`
`agreement they have reached with Aker as to how the two Petitioners will
`
`cooperate in the event that the instant proceeding is joined with IPR2014-00003.
`
`We encouraged the parties to file with the Board a joint stipulation setting forth the
`
`agreement as to how the two Petitioners will cooperate, in the event the Motion for
`
`Joinder is granted.
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s Motion for Additional Discovery in
`
`IPR2014-00003 (Paper 55) is dismissed as moot;
`
`FURTHER ORDERED that DUE DATE 7 in IPR2014-00003 is moved
`
`from October 21, 2014, to October 17, 2014;
`
`FURTHER ORDERED that Enzymotec is not authorized to file a reply to
`
`Patent Owner’s Opposition to Enzymotec’s Motion for Joinder (Paper 11) in the
`
`instant proceeding;
`
`FURTHER ORDERED that Enzymotec and Aker may jointly file a
`
` 3
`
`
`
`
`
`

`

`Case IPR2014-00556
`Patent 8,278,351
`
`
`stipulation setting forth their agreement as to how they will cooperate in the event
`
`that the instant proceeding is joined with IPR2014-00003; and
`
`FURTHER ORDERED that a copy of this order will also be entered into the
`
`record in IPR2014-00003.
`
`
`
`Petitioner:
`
`Elizabeth Holland
`Cynthia Hardman
`Kenyon & Kenyon LLP
`eholland@kenyon.com
`chardman@kenyon.com
`
`John Jones
`jmjones@casimirjones.com
`
`Amanda Hollis
`amanda.hollis@kirkland.com
`
`Patent Owner:
`
`Stephen Altieri
`saltieri@cooley.com
`
`J. Dean Farmer
`dfarmer@cooley.com
`
`
`
` 4
`
`
`
`
`
`