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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
`Petitioner,
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`v.
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`AKER BIOMARINE ANTARCTIC AS
`Patent Owner.
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`____________________________
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`Case IPR2018-01178
`U.S Patent No. 9,375,453
`_______________________
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`Patent Owner’s Request for Oral Argument
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2018-01178
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`U.S Patent No. 9,375,453
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`Pursuant to 37 C.F.R. § 42.70, the Board’s Scheduling Order dated January 14,
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`2019 (Paper 8), and the email from Trials dated September 6, 2019, Patent Owner
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`respectfully requests an oral argument in connection with IPR2018-01178 and
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`IPR2018-01179, scheduled for October 16, 2019, in the Silicon Valley USPTO, 26 S.
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`Fourth Street, San Jose, CA 95113, (408) 918-9900. Patent Owner requests sixty
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`(60) minutes total in which to present its arguments.
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`ISSUES TO BE ARGUED:
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`1.
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`The Board should adopt the claim construction positions advanced by
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`Aker.
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`2.
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`Petitioner’s failure to prove that any of claims 1-32 are obvious over the
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`combinations of references in the following Table:
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`Ground
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`References
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`TABLE 1
`Basis
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`1
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`2
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`Breivik II, Catchpole,
`Bottino II, and
`Sampalis I
`Breivik II, Catchpole,
`Bottino II, Sampalis I,
`and Sampalis II
`Breivik II, Catchpole,
`Bottino II, Sampalis I,
`and Fricke
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`35 U.S.C. § 103(a)
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`35 U.S.C. § 103(a)
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`35 U.S.C. § 103(a)
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`3
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`9,375,453 B1
`Claims Challenged
`1-3, 5-10, 12, 14-17, 19-
`20, 23-26, 28, 30-32
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`4
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`11, 18, 21, 27
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`IPR2018-01178
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`U.S Patent No. 9,375,453
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`4
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`Breivik II, Catchpole,
`Bottino II, Sampalis I,
`and Randolph
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`35 U.S.C. § 103(a)
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`13, 22, 29
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`3.
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`Patent Owner’s Motion to Amend the Claims and Petitioner’s failure to
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`demonstrate that contingent substitute claims 62-74 are obvious on the following
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`9,375,453 B1
`Amended Claims Challenged
`Amended Claim (Original No.)
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`62(1), 63(2), 64(3), 66(5), 67(6),
`68(7), 69(8), 70(9), 71(10),
`73(12)
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`65(4)
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`72(11)
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`grounds:
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`Ground References
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`5
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`6
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`7
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`Yoshitomi, Catchpole,
`Bottino II, Sampalis I,
`Sampalis II, Randolph
`and NKO (Applicant
`Admitted Prior Art)
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`Yoshitimi, Catchpole,
`Bottino II, Sampalis I,
`Sampalis II, Randolph
`and NKO (Applicant
`Admitted Prior Art)
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`Yoshitomi, Catchpole,
`Bottino II, Sampalis I,
`Sampalis II, Fricke,
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`TABLE II
`Basis
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`35 U.S.C.
`§ 103(a)
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`35 U.S.C.
`§ 103(a)
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`35 U.S.C.
`§ 103(a)
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`4
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`IPR2018-01178
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`U.S Patent No. 9,375,453
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`Randolph and NKO
`(Applicant Admitted
`Prior Art)
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`Yoshitomi, Catchpole,
`Bottino II, Sampalis I,
`Sampalis II, Randolph
`and NKO (Applicant
`Admitted Prior Art)
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`74(13)
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`35 U.S.C.
`§ 103(a)
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`8
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`4.
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`5.
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`The content of the prior art at issue.
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`The state of the art at the time of the claimed inventions.
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`6.
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`The lack of motivation to combine the proposed obviousness
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`references to arrive at the claimed processes as well the lack of a reasonable
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`expectation of success.
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`7.
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`Any subsidiary issue relevant to issues (1) to (6), including, without
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`limitation, claim construction, assessment of evidence, and admissibility of
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`evidence or arguments;
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`8. Any issues raised by Petitioner’s request for oral argument.
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`9. Rebuttal to Petitioner’s presentation on all matters.
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`Patent Owner respectfully requests that the Board make available audio-
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`visual equipment, including a projector to be connected to a laptop to display
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`demonstrative exhibits and documents of record.
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`IPR2018-01178
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`Dated: September 16, 2019
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`U.S Patent No. 9,375,453
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`Respectfully submitted,
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` /David Casimir/
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`David A. Casimir
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`Reg. No. 42,395
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`Lead Counsel for Patent Owner
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`Casimir Jones S.C.
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`2275 Deming Way, Ste. 310
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`Middleton, WI 52528
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`Tel: 608-662-1277
`Fax: 608-662-1276
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`6
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`IPR2018-01178
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on this 16th day of September 2019, a
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`U.S Patent No. 9,375,453
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`copy of the foregoing Patent Owner’s Request for Oral Argument was served in
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`their entirety electronically (as consented to by Petitioner) to the attorneys of
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`record as follows:
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`453ipr@hbiplaw.com
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`James F. Harrington
`jfhdocket@hbiplaw.com
`Hoffmann & Baron, LLP
`6900 Jericho Turnpike
`Syosset, NY 11791
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`Michael I. Chakansky
`micdocket@hbiplaw.com
`Hoffmann & Baron, LLP
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`Ronald J. Baron
`rjbdocket@hbiplaw.com
`Hoffmann & Baron, LLP
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`John T. Gallagher
`jtgdocket@hbiplaw.com
`Hoffmann & Baron, LLP
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`By: /David A. Casimir/
`David A. Casimir, Ph.D.
`Registration No. 42,395
`Counsel for Patent Owner
`CASIMIR JONES, S.C.
`2275 Deming Way, Suite 310
`Middleton, Wisconsin 53562
`(608) 662-1277
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`7
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