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`PAPER NO. 35
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________
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`RIMFROST AS
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`Petitioner
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`v.
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`AKER BIOMARINE ANTARCTIC AS
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`Patent Owner
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`_______________________
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`Case: IPR2018-01178
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`U.S. Patent No. 9,375,453
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`______________________
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`PETITIONER’S FIFTH UPDATED SUBMISSION OF
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`MANDATORY NOTICE INFORMATION
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`IPR 2018-01178
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`U.S. Patent No. 9,375,453
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`Petitioner Rimfrost AS provides the following updated Mandatory Notice
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`pursuant to 37 C.F.R. § 42.8. On January 13, 2020, the Board issued its Final
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`Written Decision in IPR 2018-01178 (Paper 34), holding claims 1-32 of U.S.
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`Patent No. 9,375,453 unpatentable (“1178-FWD”). Patent Owner had until
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`February 12, 2020 to file a Request for Rehearing of the 1178-FWD - Patent
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`Owner did not file a Request for Rehearing. Thereafter, Patent Owner had until
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`March 16, 2020 to file a Notice of Appeal of the 1178-FWD with the U.S. Court of
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`Appeals for the Federal Circuit – Patent Owner did not file a Notice of Appeal.
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`Therefore, Patent Owner is precluded from taking any further action with respect
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`to the 1178-FWD, which after March 16, 2020 must be considered final.
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`As Patent Owner is precluded from taking any further action with respect to
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`the 1178-FWD, which found claims 1-32 of U.S. Patent No. 9,375,453
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`unpatentable, pursuant to 35 U.S.C. ¶ 318 (b), Petitioner respectfully requests that
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`a certificate cancelling claims 1-32 of U.S. Patent No. 9,375,453 be issued and
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`published.
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`Petitioner further updates the Board, in connection with a related inter partes
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`review, IPR 2018-01179, which addressed the remaining claims of U.S. Patent
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`No. 9,375,453. On January 13, 2020, the Board issued its Final Written Decision
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`in IPR 2018-01179 (Paper 34), holding claims 33-61 of U.S. Patent No. 9,375,453
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`2
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`IPR 2018-01178
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`unpatentable (“1179-FWD”). Patent Owner did not file (i) a Request for
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`U.S. Patent No. 9,375,453
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`Rehearing of the 1179-FWD, or (ii) a Notice of Appeal of the 1179-FWD to the
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`Federal Circuit, and the time for both has lapsed. Therefore, Patent Owner is
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`precluded from taking any further action with respect to the 1179-FWD and
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`Petitioner is contemporaneously filing a Mandatory Notice Update in IPR2018-
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`01179 requesting that the remaining claims of U.S. Patent No. 9,375,453 be
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`cancelled.
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`RELATED MATTERS.
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`Finally, Petitioner is providing notice regarding the status of two other
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`patents owned by Patent Owner that are related to U.S. Patent No. 9,375,453 (all
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`three patents claim priority to and are continuations of the same parent patent).
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`These two other patents, which were the subject of IPR2017-00745 and IPR2017-
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`00746, were cancelled by Inter Partes Certificates US 9,078,905 Kl and US
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`9,028,877 Kl, respectively.
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`On October 3, 2019, the Federal Circuit, in a consolidated decision, affirmed
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`the Board’s Final Written Decisions in related IPR2017-00745 and IPR2017-00746
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`finding all claims of Patent Owner’s U.S. Patent Nos. 9,078,905 B2 and 9,028,877
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`B2 unpatentable. Aker Biomarine Antarctic AS v. Rimfrost AS, 786 Fed. Appx.
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`3
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`IPR 2018-01178
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`251 (Fed. Cir. 2019). The Federal Circuit’s Mandate issued on November 12,
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`U.S. Patent No. 9,375,453
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`2020.
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`On March 11, 2020, Inter Partes Review Certificate US 9,078,905 Kl was
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`issued cancelling all claims of U.S. Patent No. 9,078,905. On March 12, 2020,
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`Inter Partes Review Certificate US 9,028,877 Kl was issued cancelling all claims
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`of U.S. Patent No. 9,028,877.
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`Dated: June 4, 2019
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`Respectfully submitted,
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`By: /Michael I. Chakansky/
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`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`4 Century Drive
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`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
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`First Back-Up Counsel for Petitioner
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`4
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`IPR 2018-01178
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`U.S. Patent No. 9,375,453
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this the 4th day of June, 2020, the foregoing
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`PETITIONER’S FIFTH UPDATED SUBMISSION OF MANDATORY NOTICE
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`INFORMATION was served in its entirety on the following counsel of record by
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`electronic service by email at the email addresses as set forth below in accordance
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`with the consent set forth in Patent Owner’s Mandatory Notices Pursuant to 37
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`C.F.R. § 42.8 (Paper No. 4, p. 2).
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`David A. Casimir
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`J. Mitchell Jones
`CASIMIR JONES S.C.
`2275 Deming Way, Suite 310
`Middleton, WI 53562
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`docketing@casimirjones.com
`dacasimir@casimirjones.com
`jmjones@casimirjones.com
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`By:
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`/Michael I. Chakansky/
`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`4 Century Drive
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`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
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