`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ENZYMOTEC, LTD.
`Petitioner
`
`v.
`
`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
`
`Patent No. 8,278,351
`Filing Date: July 25, 2011
`Issue Date: October 2, 2012
`
`
`Title: NATURAL MARINE SOURCE PHOSPHOLIPIDS COMPRISING
`POLYUNSATURATED FATTY ACIDS AND THEIR APPLICATIONS
`
`
`
`
`Inter Partes Patent Review No.: IPR2014-00586
`Petition Filed: April 11, 2014
`
`
`
`
`
`
`
`1
`
`
`
`Case No.: IPR2014-00586
`Patent Owner’s Mandatory Notices
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8, the patent owner, NEPTUNE TECHNOLOGIES AND
`
`BIORESSOURCES INC., 545 Promenade du Centropolis, Laval, Québec, Canada H7T 0A3
`
`(“Patent Owner” or “Neptune”), hereby submits the following mandatory notices in response
`
`to the Petition for Inter Partes Patent Review of United States Patent No. 8,278,351 filed on
`
`April 11, 2014:
`
`1.
`
`
`
`2.
`
`
`
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1).
`
`Neptune is the patent owner and the real party-in-interest in this proceeding.
`
`Related Matters under 37 C.F.R. § 42.8(b)(2).
`
`The following judicial or administrative matters may affect or be affected by a
`
`decision in this proceeding:
`
`
`
`U.S. Patent No. 8,278,351 (“the ‘351 Patent”) was asserted in two patent litigations
`
`in the U.S. District Court for the District of Delaware: Neptune Technologies and
`
`Bioressources Inc., v. Aker Biomarine ASA, et al., case 12-cv-1252 (filed October 2, 2012)
`
`and Neptune Technologies and Bioressources Inc., v. Enzymotec Limited, et al., case No.
`
`12-cv-1253 (filed October 2, 2012). These litigations have settled.
`
`
`
`The ‘351 Patent was also asserted in the International Trade Commission. The
`
`Investigation, which was requested by the Patent Owner on January 29, 2013, is entitled
`
`Certain Omega-3 Extracts from Marine or Aquatic Biomass and Products Containing the
`
`Same, Investigation No. 337-TA-877. This investigation has settled.
`2
`
`
`
`
`
`Case No.: IPR2014-00586
`Patent Owner’s Mandatory Notices
`
`Three additional Inter Partes Reviews of the ‘351 Patent have been requested. Inter
`
`
`
`Partes Review IPR2014-00003 was filed on October 1, 2013 and is pending. Inter Partes
`
`Review IPR2014-00556 was filed on April 4, 2014 and is pending. Inter Partes Review
`
`IPR2014-00636 was filed on April 23, 2014 and is pending.
`
`
`
`The ‘351 Patent is also subject to Ex Parte Reexamination Control No. 90/012,698
`
`(filed October 2, 2012). This reexamination has been stayed pending the outcome of Inter
`
`Partes Review IPR2014-00003 (see Paper 25 of IPR2014-00003).
`
`
`
`The ‘351 patent claims priority from U.S. Patent No. 8,030,348 (“the ‘348 Patent,”
`
`filed July 29, 2002; issued October 4, 2011). The ‘348 Patent is the subject of the following
`
`litigations, filed by the Patent Owner, in the U.S. District Court for the District of Delaware:
`
`Neptune Technologies and Bioressources Inc. v. Aker Biomarine ASA, et al., Case 11-cv-
`
`00894 (filed October 4, 2011) and Neptune Technologies and Bioressources Inc. v.
`
`Enzymotec Limited, et al., Case 11-cv-00895 (filed October 4, 2011). These litigations have
`
`settled.
`
`
`
`The ‘348 Patent is also subject to Inter Partes Reexamination Control No.
`
`95/001,774 (filed October 19, 2011). This reexamination is in progress.
`
`
`
`U.S. Patent No. 8,383,675 (“the ‘675 Patent,” filed July 10, 2012; issued February
`
`26, 2013) claims priority from the ‘351 patent. The ‘675 Patent is the subject of the following
`
`litigations, filed by the Patent Owner, in the U.S. District Court for the District of Delaware:
`
`Neptune Technologies and Bioressources Inc., v. Aker Biomarine ASA, et al., Case 13-cv-
`
`
`
`3
`
`
`
`Case No.: IPR2014-00586
`Patent Owner’s Mandatory Notices
`
`340 (filed February 28, 2013) and Neptune Technologies and Bioressources Inc., v.
`
`Enzymotec Limited, et al., 13-cv-341 (filed February 28, 2013). These litigations have
`
`settled.
`
`
`
`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
`
`Certain Omega-3 Extracts from Marine or Aquatic Biomass and Products Containing the
`
`Same, Investigation No. 337-TA-877. This investigation has settled.
`
`
`
`Two Inter Partes Reviews of the ‘651 Patent have been requested. Inter Partes
`
`Review IPR2014-00126 was filed on November 7, 2013 and is terminated (see Paper 15 of
`
`IPR2014-00126). Inter Partes Review IPR2014-00466 was filed on February 27, 2014 and
`
`is pending.
`
`
`
`The following currently pending U.S. patents or patent applications claim priority to
`
`the ‘351 or related Patents: U.S. Patent Application No. 13/280,182, filed October 24, 2011,
`
`and issued as U.S. Patent No. 8,680,080 on March 25, 2014, and U.S. Patent Application
`
`No.13/750,663, filed January 25, 2013.
`
`3.
`
`
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3).
`
`The Patent Owner designates the following lead and back-up counsel.
`
`LEAD COUNSEL
`Stephen L. Altieri, Ph.D. (Reg. No. 63,133)
`IPR2014-00586@cooley.com
`
`Cooley LLP
`
`BACK-UP COUNSEL
`J. Dean Farmer, Ph.D. (Reg. No. 57,917)
`IPR2014-00586@cooley.com
`
`Cooley LLP
`
`
`
`4
`
`
`
`Case No.: IPR2014-00586
`Patent Owner’s Mandatory Notices
`
`
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (617) 937-2370
`Fax: (202) 842-7899
`
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (617) 937-2371
`Fax: (202) 842-7899
`
`4.
`
`Service Information under 37 C.F.R. § 42.8(b)(4).
`
`
`
`Please address all correspondence to the lead counsel and the back-up counsel as
`
`shown above. The Patent Owner consents to electronic service by e-mail at the e-mail
`
`addresses provided above.
`
`The Office is authorized to charge fee deficiencies to Deposit Account 50-1283.
`
`
`
`
`DATE: APRIL 29, 2014
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
`
`Tel: (617) 937-2371
`Fax: (202) 842-7899
`
`
`
`
`
`
`By:
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`/ Stephen L. Altieri /
`Stephen L. Altieri, Ph.D.
`Reg. No. 63,133
`
`
`
`5
`
`
`
`Case No.: IPR2014-00586
`Patent Owner’s Mandatory Notices
`
`
`CERTIFICATION OF SERVICE
`
`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 29th day of April,
`
`2014, the same day as the filing of the above-identified documents in the United States
`
`Patent and Trademark Office (USPTO), upon:
`
`Elizabeth J. Holland
`eholland@kenyon.com
`Hand delivery address:
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Telephone: (212) 908-6307
`Facsimile: (212) 425-5288
`Reg. No. 47,657
`
`Cynthia Lambert Hardman
`chardman@kenyon.com
`Hand delivery address:
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Telephone: (212) 908-6370
`Facsimile: (212) 425-5288
`Reg. No. 53,179
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Case No.: IPR2014-00586
`Patent Owner’s Mandatory Notices
`
`
`
`
`
`By:
`
`
`
`Respectfully submitted,
`COOLEY LLP
`
`/ Stephen L. Altieri /
`Stephen L. Altieri, Ph.D.
`Reg. No. 63,133
`
`
`
`DATE: APRIL 29, 2014
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
`
`Tel: (617) 937-2371
`Fax: (202) 842-7899
`
`
`
`
`
`
`
`
`106244681 v1
`
`
`
`7
`
`