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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`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.: IPR2014-00636
`Petition Filed: April 23, 2014
`
`
`
`
`
`PETITIONER ENZYMOTEC, LTD.
`AND
`PATENT OWNER NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 U.S.C. § 317
`
`1
`
`
`
`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`
`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, and the Board’s order of May
`
`
`I.
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`5, 2014 authorizing this motion (IPR2014-00636, Paper No. 8, (Green)), Petitioner
`
`Enzymotec Ltd. (“Enzymotec”) and Patent Owner Neptune Technologies and Bioressources
`
`Inc. (“Neptune”) jointly request termination of Inter Partes Review IPR2014-00636 of U.S.
`
`Patent No. 8,278,351 (“the ‘351 Patent”).
`
`II.
`
`STATEMENT OF FACTS
`This review has not been instituted. Enzymotec filed its petition for review on April
`
`23, 2014, and Neptune has not yet filed a preliminary response. On April 27, 2014, the
`
`parties reached settlement of certain adversarial matters between them (“Settlement
`
`Agreement,” see infra). Specifically, the parties agreed to terminate the following
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`adversarial matters:
`
` An International Trade Commission (“ITC”) investigation, 337-TA-877, regarding
`
`Enzymotec’s alleged infringement of the ‘351 Patent and U.S. Patent No.
`
`8,383,675 (“the ‘675 Patent)1 and the alleged invalidity and unenforceability of
`
`those patents;
`
` Three actions in the United States District Court for the District of Delaware,
`
`
`
` 1
`
` Aker Biomarine AS (“Aker”) was also a Respondent in this Investigation.
`
`
`
`2
`
`
`
`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`namely (i) case no. 11-cv-00895 regarding Enzymotec’s alleged infringement of
`
`U.S. Patent No. 8,030,348 (“the ‘348 Patent”) and the alleged invalidity and
`
`unenforceability of that patent, (ii) case no. 12-cv-1253 regarding Enzymotec’s
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`alleged
`
`infringement of
`
`the
`
`‘351 Patent and
`
`the alleged
`
`invalidity and
`
`unenforceability of
`
`that patent, and (iii) case no. 13-cv-341 regarding
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`Enzymotec’s alleged infringement of the ‘675 Patent and the alleged invalidity
`
`and unenforceability of that patent2; and
`
` This Inter Partes Review action and Inter Partes Review Case Nos. IPR2014-
`
`00466 and IPR2014-00586.
`
`
`
`The parties note other related proceedings before the USPTO:
`
` The ‘351 Patent is subject to three Inter Partes Reviews. Inter Partes Review
`
`IPR2014-00003 was filed on October 1, 2013 and has been instituted. Inter
`
`Partes Review IPR2014-00556 was filed on April 4, 2014 and is pending.
`
`
`
` 2
`
` Patent Owner notes that it was involved as plaintiff and another party, Aker, was involved
`
`as defendant in three related actions in the United States District Court for the District of
`
`Delaware, namely (i) case no. 11-cv-00894 regarding Aker’s alleged infringement of the
`
`‘348 Patent, (ii) case no. 12-cv-1252 regarding Aker’s alleged infringement of the ‘351
`
`Patent, and (iii) case no. 13-cv-340 regarding Aker’s alleged infringement of the ‘675 Patent.
`
`All of these matters have settled, and the cases noted in (ii) and (iii) have been dismissed.
`
`
`
`3
`
`
`
`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`Inter Partes Review IPR2014-00586 (noted above) was filed on April 11, 2014
`
`and is pending. As mentioned, the parties agreed to terminate the latter Inter
`
`Partes Review.
`
` 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 ‘675 Patent claims priority from the ‘351 Patent. The ‘675 Patent is
`
`subject to Inter Partes Review IPR2014-00466 (noted above), which was filed
`
`on February 27, 2014 and is pending. As mentioned, the parties agreed to
`
`terminate this Inter Partes Review.
`
` The ‘351 patent claims priority from the ‘348 Patent, which is subject to Inter
`
`Partes Reexamination Control No. 95/001,774 (filed October 19, 2011). This
`
`reexamination is in progress.
`
` The following currently pending U.S. patent application claims priority from
`
`the ‘675 Patent or related patents: U.S. Patent Application No.13/750,663,
`
`filed January 25, 2013. In addition, U.S. Patent Application No. 13/280,182,
`
`filed October 24, 2011, claims priority from the ‘675 Patent or related patents.
`
`It issued as U.S. Patent No. 8,680,080 on March 25, 2014.
`
`
`
`4
`
`
`
`III.
`
`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`
`ARGUMENT
`A.
`Termination of IPR2014-00636 is Appropriate
`The Board should terminate IPR2014-00636 for at least the following reasons.
`
`First, the statutory condition for termination under 35 U.S.C. § 317(a) is satisfied –
`
`this joint request for termination is being filed before the Board has decided the merits of the
`
`proceeding. Indeed, the Board has not yet issued a decision on the petition to institute a
`
`review.
`
`Second, the parties have agreed to terminate this proceeding, in connection with
`
`their Settlement Agreement.
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`Third, the merits of the petition have not been determined, no motions (other than a
`
`motion for joinder with Inter Partes Review IPR2014-00003) or other matters are
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`outstanding, and concluding this review at this early juncture promotes efficient use of the
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`resources of the Board and saves expense for the parties.
`
`A True Copy of the Parties’ Settlement Agreement is Filed Herewith
`B.
`The parties’ Settlement Agreement has been made in writing, and a true and correct
`
`
`
`copy is filed herewith as business confidential information pursuant to 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74, as Exhibit 2001. A Joint Request to File a Settlement Agreement as
`
`Business Confidential Information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 is also
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`being filed herewith.
`
`
`
`5
`
`
`
`C.
`
`Estoppel
`
`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`
`As stated in 35 U.S.C. § 317(a), because Enzymotec and Neptune request this
`
`termination jointly, no estoppel under 35 U.S.C. § 315(e) shall attach to Petitioner
`
`Enzymotec.
`
`Summary
`D.
`For the foregoing reasons, Enzymotec and Neptune respectfully request termination
`
`of
`
`Case
`
`No.
`
`IPR2014-00636
`
`involving
`
`U.S.
`
`Patent
`
`No.
`
`8,278,351.
`
`
`
`6
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`
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`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`
`
`associated with this filing to Deposit Account 50-1283.
`
`
`
`Date: May 5, 2014
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW,
`Suite 700
`Washington, DC 20004
`
`Tel: (617) 937-2371
`Fax: (202) 842-7899
`
`
`
`Date: May 6, 2014
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`
`Tel: (212) 908-6307
`Fax: (212) 425-5288
`
`
`
`
`
`
`By:
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`
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`
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`By:
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`Cooley LLP
`
`/Stephen L. Altieri/
`Stephen L. Altieri, Ph.D.
`Reg. No. 63,133
`Lead Counsel for Patent Owner
`
`
`
`
`Respectfully submitted,
`Kenyon & Kenyon LLP
`
`/Elizabeth J. Holland/
`
`Elizabeth J. Holland
`Reg. No. 47,657
`Lead Counsel for Petitioner
`
`
`
`
`
`
`7
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`
`
`Case No.: IPR2014-00636
`Joint Motion to Terminate Proceeding
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify pursuant to 37 C.F.R. §§ 42.6(e) and 42.205(b) that a complete copy
`
`of this Joint Motion to Terminate, Joint Request to File Settlement Agreement as Business
`
`Confidential Information, and Exhibit 2001 are being served electronically via e-mail (as
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`consented to by the Petitioner), on May 7, 2014, the same day as the filing of the above-
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`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
`
`
`
`Dated: May 7, 2014
`
`
`
`
`106532276 v3
`
`
`
`
`/Stephen L. Altieri/
`Stephen L. Altieri, Ph.D.
`
`
`
`8
`
`
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