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`PAPER NO. 16
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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
`
`v.
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`AKER BIOMARINE ANTARCTIC AS
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`Patent Owner
`
`_______________________
`
`Case: IPR2018-0730
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`U.S. Patent No. 9,072,752
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`_____________________
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`PETITIONER’S FIRST UPDATED SUBMISSION OF
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`MANDATORY NOTICE INFORMATION
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`
`
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`IPR 2018-01730
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`U.S. Patent No. 9,072,752
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`Petitioner Rimfrost AS provides the following updated Mandatory Notices
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`pursuant to 37 C.F.R. § 42.8. In this case, updated information is provided
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`regarding proceedings before the PTAB in connection with patents in the same
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`patent family as U.S. Patent No. 9,072,752 (“the ‘752 Patent”). In connection with
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`two inter partes review proceedings, Final Written Decisions were issued
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`determining that the related patents were unpatentable. See paragraphs in italics
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`below for updated content.
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`RELATED MATTERS
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`
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`Aker has asserted two patents - U.S. Patent Nos. 9,078,905 and 9,028,877 in
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`a pending litigation commenced by Aker against Olympic Holding AS; Rimfrost
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`AS; Emerald Fisheries AS, Rimfrost USA, LLC; Avoca Inc.; and Bioriginal Food
`
`& Science Corp. See Case No. 1:16-CV-00035-LPS-CJB (D. Del.). (Complaint,
`
`Exhibit 1021). The litigation was stayed pursuant to 28 U.S.C. § 1659 in view of
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`Investigation No. 337-TA-1019 instituted by the U.S. International Trade
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`Commission on September 16, 2016. The ITC proceeding, In the Matter of Certain
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`Krill Oil Products and Krill Meal for Production of Krill Oil Products, related to
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`Aker’s U.S. Patent Nos. 9,028,877, 9,078,905, 9,072,752, 9,320,765, and
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`9,375,453. The ITC Investigation identified Olympic Holding AS, Rimfrost AS,
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`Emerald Fisheries AS, Avoca Inc., Rimfrost USA, LLC, Rimfrost New Zealand
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`
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`2
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`IPR 2018-01730
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`Limited and Bioriginal Food & Science Corp. as respondents. (Exhibit 1023). On
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`U.S. Patent No. 9,072,752
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`
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`May 23, 2017, ITC Investigation No. 337-TA-1019 was effectively terminated.
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`(Exhibit 1054). In addition, a Stipulation of Dismissal as to Avoca Inc. was granted
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`by the Delaware District Court on May 30, 2017.
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`On January 27, 2017, Petitioner filed petitions in IPR2017-0745 and
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`IPR2017-0747 requesting review of claims 1-20 of U.S. Patent No. 9,078,905. On
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`February 3, 2017, Petitioner filed petitions in IPR2017-0746 and IPR2017-0748
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`requesting review of claims 1-19 of U.S. Patent No. 9,028,877. Each of these IPRs
`
`was instituted on August 16, 2017. On September 6, 2017, the Delaware District
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`Court action was stayed pending resolution of the IPRs. (Exhibit 1078).
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`On December 15, 2017, Petitioner filed a petition in IPR2018-00295
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`requesting review of claims 1-48 of U.S. Patent No. 9,320,765. This IPR was
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`instituted on June 14, 2018.
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`On February 9, 2018, Petitioner filed a petition in PGR2018-0033 requesting
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`review of claims 1-20 of U.S. Patent No. 9,644,170.
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`On June 26, 2018, Petitioner filed a Petition in IPR2018-01178 requesting
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`review and cancellation of claims 33-61 of U.S. Patent No. 9,375,453.
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`On June 26, 2018, Petitioner filed a Petition in IPR2018-01179 requesting
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`review and cancellation of claims 33-61 of U.S. Patent No. 9,375,453.
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`3
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`IPR 2018-01730
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`U.S. Patent No. 9,072,752
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`On August 10, 2018, the PTAB issued Final Written Decisions (FWD) in the
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`following inter partes review proceedings of patents in the same patent family as
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`the ‘752 Patent:
`
`IPR2017-00745, FWD determining Claims 1-20, i.e., all claims, of
`U.S. Patent 9,078,905 B2 have been shown to be unpatentable on the
`grounds presented;
`
`IPR2017-00746, FWD determining that Claims 1-19, i.e., all
`claims, of U.S. Patent 9,028,877 B2 have been shown to be
`unpatentable on the grounds presented;
`
`IPR2017-00747, FWD determining that Claims 1-20 of U.S. Patent
`9,078,905 B2 have not been shown to be unpatentable on the grounds
`presented; and
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`IPR2017-00748, FWD determining that Claims 1-19 of U.S. Patent
`9,028,877 B2 have not been shown to be unpatentable on the grounds
`presented.
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`
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`
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`On August 29, 2018, institution was denied in PGR2018-0033, requesting
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`review of claims 1-20 of U.S. Patent No. 9,644,170 (a patent in the same patent
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`4
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`IPR 2018-01730
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`family as the ‘453 Patent) based on the determination that the ‘170 Patent was not
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`U.S. Patent No. 9,072,752
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`
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`eligible for post grant review.
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`
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`On September 21, 2018, Petitioner filed IPR2018-01730 seeking inter partes
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`review of claims 1-20 of U.S. Patent No. 9,072,752.
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`
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`On October 12, 2018, Patent Owner filed Notices of Appeal seeking review
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`of the FWD’s in IPR2017-0045 and IPR2017-0046.
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`
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`On January 14, 2019, IPR2018-01178 was instituted on claims 1-32 of U.S.
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`Patent No. 9,375,453.
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`
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`On January 14, 2019, IPR2018-01179 was instituted on claims 33-61 of
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`U.S. Patent No. 9,375,453.
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`
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`On March 12, 2019, IPR2018-01730 was instituted on claims 1-20 of U.S.
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`Patent No. 9,072,752.
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`
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`On June 12, 2019, the PTAB issued a Final Written Decision (Paper 35) in
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`IPR2018-00295 finding claims 1-48 of U.S. Patent No. 9,320,765 unpatentable,
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`and denying Patent Owner’s contingent Motion to Amend to replace claims 25-32
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`with substitute claims 49-56 as unpatentable over the prior art.
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`
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`On July 12, 2019, Patent Owner filed a Request for Rehearing (Paper 36) of
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`the FWD in IPR2018-00295 denying Patent Owner’s contingent Motion to Amend
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`to replace U.S. Patent No. 9,320,765 claims with substitute claims. On August 15,
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`5
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`IPR 2018-01730
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`2019, Petitioner filed its Response to Patent Owner’s Request for Rehearing
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`
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`U.S. Patent No. 9,072,752
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`(Paper 37). On September 4, 2019, Patent Owner filed its Reply to Petitioner’s
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`Response on Request for Rehearing.
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`Dated: September 16, 2019
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`Respectfully submitted,
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`By: /Michael I. Chakansky/
`
`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`4 Century Drive
`
`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
`
`First Back-Up Counsel for Petitioner
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`6
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`IPR 2018-01730
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`U.S. Patent No. 9,072,752
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on this the 16th day of September, 2019, the foregoing
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`PETITIONER’S FIRST 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
`
`C.F.R. § 42.8 (Paper No. 4, p. 3).
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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
`
`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
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