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`PAPER NO. 8
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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: PGR 2018-00033
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`U.S. Patent No. 9,644,170
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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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`PGR 2018-00033
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`U.S. Patent No. 9,644,170
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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 the ‘170 Patent. In connection with two inter partes review
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`proceedings, Final Written Decisions were issued determining that two of the
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`related patents were unpatentable. See paragraphs in italics below for updated
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`content.
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`RELATED MATTERS
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`Aker has asserted two patents - U.S. Patent Nos. 9,078,905 and 9,028,877 -
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`in a pending lawsuit brought by Aker Biomarine Antarctic AS against Olympic
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`Holding AS; Rimfrost AS; Emerald Fisheries AS, Rimfrost USA, LLC; Avoca
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`Inc.; and Bioriginal Food & Science Corp. Case No. 1:16-CV-00035-LPS-CJB (D.
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`Del.). (Complaint, Exhibit 1021). The litigation was stayed pursuant to 28 U.S.C. §
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`1659 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, entitled In the Matter of Certain Krill Oil Products
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`and Krill Meal for Production of Krill Oil Products, related to U.S. Patent Nos.
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`9,028,877, 9,078,905, 9,072,752, 9,320,765 and 9,375,453. The ITC investigation
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`2
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`PGR 2018-00033
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`listed as respondents Olympic Holding AS, Rimfrost AS, Emerald Fisheries AS,
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`U.S. Patent No. 9,644,170
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`Avoca Inc., Rimfrost USA, LLC, Rimfrost New Zealand Limited and Bioriginal
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`Food & Science Corp. (Exhibit 1023). On May 23, 2017, pursuant to motions to
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`terminate, 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 So
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`Ordered by the Delaware District Court on May 30, 2017. On January 27, 2017,
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`Petitioner filed IPR2017-0745 and IPR2017-0747 seeking inter partes review of
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`Claims 1-20 of U.S. Patent No. 9,078,905. On February 3, 2017, Petitioner filed
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`IPR2017-0746 and IPR2017-0748 seeking inter partes review of Claims 1-19 of
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`U.S. Patent No. 9,028,877. All IPRs were instituted on August 16, 2017. The
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`Delaware District Court action was stayed by the Court on September 6, 2017
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`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, i.e., all claims, of U.S. Patent No. 9,320,765 (a
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`patent in the same patent family as the ‘170 Patent). IPR2018-00295 was instituted
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`on June 14, 2018.
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`On June 26, 2018, Petitioner filed IPR2018-01178 seeking inter partes
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`review of Claims 1-32 of U.S. Patent No. 9,375,453 (a patent in the same patent
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`family as the ‘170 Patent).
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`PGR 2018-00033
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`U.S. Patent No. 9,644,170
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`On June 26, 2018, Petitioner filed IPR2018-01179 seeking inter partes
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`review of Claims 33-61 of U.S. Patent No. 9,375,453 (a patent in the same patent
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`family as the ‘170 Patent).
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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 two (2) patents in the same patent
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`family as the ‘170 Patent:
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`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;
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`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;
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`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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`PGR 2018-00033
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`Dated: August 21, 2018
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`U.S. Patent No. 9,644,170
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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
`6 Campus 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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`5
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`PGR 2018-00033
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`U.S. Patent No. 9,644,170
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this the 21st day of August, 2018, 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
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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
`6 Campus Drive
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`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
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