UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
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`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 No. IPR2020-01532
`U.S. Patent 9,644,169
`Issue Date: May 9, 2017
`Title: Bioeffective Krill Oil Compositions
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`
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`PATENT OWNER’S MANDATORY NOTICES PURSUANT TO
` 37 C.F.R. § 42.8
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
`
`Petitioner
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`
`Patent Owner
`
`
`
`Case No. IPR2020-01532
`U.S. Patent 9,644,169
`Issue Date: May 9, 2017
`Title: Bioeffective Krill Oil Compositions
`
`
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`PATENT OWNER’S MANDATORY NOTICES PURSUANT TO
` 37 C.F.R. § 42.8
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case No.: IPR2020-01532
`Patent Owner’s Mandatory Notice
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`PATENT OWNER’S MANDATORY NOTICES UNDER
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` 37 C.F.R. § 42.8
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`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1).
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`Aker BioMarine Antarctic AS is the Patent Owner and the real party-in
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`1.
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`interest in this proceeding.
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`2. Related Matters under 37 C.F.R. § 42.8(b)(2).
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`The following judicial or administrative matters may affect or be affected by
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`a decision in this proceeding:
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`Aker previously asserted the ‘877 and ‘905 patent in a lawsuit captioned
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`Aker Biomarine Antarctic AS v. Olympic Holding AS; Rimfrost AS; Emerald
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`Fisheries AS, Rimfrost USA, LLC; Avoca Inc.; and Bioriginal Food & Science
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`Corp. Case No. 1:16-CV-00035-LPS-CJB (D. Del.). This litigation was initially
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`stayed in view of Investigation No. 337-TA-1019 instituted by the United States
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`International Trade Commission on September 16, 2016 as noticed in the Federal
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`Register. The ITC proceeding was entitled In the Matter of Certain Krill Oil
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`Products and Krill Meal for Production of Krill Oil Products and involved to the
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`‘877 and ‘905 patents, as well as Patent Owner’s related ‘765, ‘453 and ‘752
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`patents. The ITC investigation identified Olympic Holding AS, Rimfrost AS,
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`Case No.: IPR2020-01532
`Patent Owner’s Mandatory Notice
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`Emerald Fisheries AS, Avoca Inc., Rimfrost USA, LLC, Rimfrost New Zealand
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`Limited and Bioriginal Food & Science Corp. as respondents. Exhibit 1023.
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`On May 23, 2017, ITC Investigation No. 337-TA-1019 was 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 IPR2017-00745 and
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`IPR2017-0747 requesting review of claims 1-20 of the ‘905 patent. On February
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`3, 2017, Petitioner filed petitions in IPR2017-0746 and IPR2017-00748 requesting
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`review of claims 1-19 of the ‘877 patent. Each was instituted on August 16, 2017.
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`On September 6, 2017, the Delaware District Court action was stayed pending
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`resolution of these IPRs. On August 24, 2018, the Board ruled that claims 1-20 of
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`the ‘905 patent and claims 1-19 of the ‘877 patent are unpatentable. 905 FWD
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`(Exhibit 1103); 877 FWD (Exhibit 1104).
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`On October 3, 2019, the U.S. Court of Appeals for the Federal Circuit, in a
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`consolidated opinion, affirmed the Board’s Final Written Decisions in IPR2017-
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`00745 and IPR2017-00746 finding all claims of the ‘877 and ‘905 patents
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`unpatentable. Aker Biomarine Antarctic AS v. Rimfrost AS, 786 F. App’x 251
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`(2019) (Exhibit 1154). On October 28, 2019, based on the Federal Circuit’s
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`affirmance of 877 FWD and 905 FWD, the Delaware District Court action was
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`dismissed with prejudice.
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`Case No.: IPR2020-01532
`Patent Owner’s Mandatory Notice
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`In March 2020, the Patent Office issued Inter Partes Review Certificates
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`cancelling claims 1-20 of the ‘905 patent and claims 1-19 of the ‘877 patent.
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`Exhibits 1155, 1156.
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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 the ‘765 patent. This IPR was instituted on
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`June 14, 2018. On June 12, 2009, the Board issued its Final Written Decision
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`finding all claims of the ‘765 patent unpatentable. 765 FWD (Exhibit 1129). As
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`part of its Final Written Decision, the PTAB also denied Patent Owner’s
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`contingent Motion to Amend that sought to replace claims 25-32 with substitute
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`claims 49-56. On July 12, 2019, Patent Owner filed a Request for Rehearing
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`limited exclusively to the Board’s denial of the Motion to Amend. On November
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`22, 2019, the Board ordered further briefing related to the Request for Rehearing
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`(Order, Conduct of the Proceeding Relating to Request on Rehearing of Final
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`Written Decision, Paper 40). On October 1, 2020 the Board issued a decision
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`denying the request for rehearing.
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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 (“the ‘170 patent”). On
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`August 29, 2018, the Board determined that the ‘170 patent was not eligible for
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`post grant review.
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`Case No.: IPR2020-01532
`Patent Owner’s Mandatory Notice
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`On June 26, 2018, Petitioner filed petitions in IPR2018-01178 and IPR2018-
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`01179 requesting review of claims 1-31 and claims 32-61 of the ‘453 patent,
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`respectively. Both proceedings were instituted on January 14, 2019. On January
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`13, 2020, the Board issued Final Written Decisions finding claims 1-31 and claims
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`32-61 unpatentable. 453 FWD I (Exhibit 1157); 453 FWD II (Exhibit 1158). The
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`Board also denied Patent Owner’s contingent motions to amend. Patent Owner did
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`not appeal either of these Final Written Decisions.
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`On September 21, 2018, Petitioner filed a petition in IPR2018-01730
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`requesting review of claims 1-20 of the ‘752 patent. This IPR was instituted on
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`May 12, 2019. On March 6, 2020, the Board issued a Final Written Decision
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`finding claims 1-20 unpatentable, and denied Patent Owner’s contingent motion to
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`amend. 765 FWD (Exhibit 1159). Patent Owner did not appeal the Board’s
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`decision.
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`On September 30, 2020, Petitioner filed a petition in IPR2020-01533
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`requesting review of claims 1-19 of U.S. Patent No. 9,816,046 (“the ‘046 patent”).
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`The ‘046 patent, like the ‘169 patent, is in the same patent family and shares a
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`common specification with the ‘877, ‘905, ‘765, ‘453 and ‘752 patents.
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`3. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3).
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`The Patent Owner designates the following lead and back-up counsel.
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`4
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`LEAD COUNSEL
`David A. Casimir, Ph.D.
`(Reg. No. 42,395)
`dacasimir@casimirjones.com
`docketing@casimirjones.com
`
`CASIMIR JONES S.C.
`2275 Deming Way, Suite 310
`Middleton, WI 53562
`(608) 662-1277 (phone)
`(608) 662-1276 (facsimile)
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`Case No.: IPR2020-01532
`Patent Owner’s Mandatory Notice
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`BACK-UP COUNSEL
`J. Mitchell Jones, Ph.D.
`(Reg. No. 44,174)
`jmjones@casimirjones.com
`docketing@casimirjones.com
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`CASIMIR JONES S.C.
`2275 Deming Way, Suite 310
`Middleton, WI 53562
`(608) 662-1277 (phone)
`(608) 662-1276 (facsimile)
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`4.
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`Service Information under 37 C.F.R. § 42.8(b)(4).
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`Please address all correspondence to the lead and back-up counsel at the
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`address as shown above. Patent Owner also consents to electronic service by e-
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`mail at: docketing@casimirjones.com , dacasimir@casimirjones.com , and
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`jmjones@casimirjones.com .
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`The Office is authorized to charge fee deficiencies to Deposit Account 50-
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`4302.
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`Date: October 22, 2020
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`CASIMIR JONES S.C.
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`2275 Deming Way, Suite 310
`Middleton, WI 53562
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`(608) 662-1277 (phone)
`(608) 662-1276 (facsimile)
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`Respectfully submitted,
`Casimir Jones, S.C.
`By:
`/David A. Casimir/
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`David A. Casimir, Ph.D.
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`Reg. No. 42,395
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`Case No.: IPR2020-01532
`Patent Owner’s Mandatory Notice
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on this 22nd day of October 2020, a
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`copy of the foregoing MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 and
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`the PATENT OWNER’S POWER OF ATTORNEY, were served in their
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`entireties via e-mail to the attorneys of record at the following addresses:
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`James F. Harrington
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`Reg. No. 44,741
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`Hoffmann & Baron, LLP
`jfhdocket@hbiplaw.com
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`John T. Gallagher
`Reg. No. 35,516
`Hoffman & Baron, LLP
`jtgdocket@hbiplaw.com
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`169ipr@hbiplaw.com
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`Michael I. Chakansky
`Reg. No. 31,600
`Hoffman & Baron, LLP
`micdocket@hbiplaw.com
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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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`6
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