UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`
`RIMFROST AS
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`Patent Owner.
`
`____________________________
`
`Case IPR-2018-01178
`
`U.S Patent No. 9,375,453
`
`_______________________
`
`
`
`PATENT OWNER’S CONTINGENT MOTION TO AMEND
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`
`TABLE OF CONTENTS
`I.  
`INTRODUCTION ................................................................................. 1 
`
`IPR2018-01178
`U.S. Patent No. 9,375,453
`
`II. 
`
`STATEMENT OF RELIEF REQUESTED .......................................... 2 
`
`III.  THE SUBSTITUTE CLAIMS MEET ALL THE
`REQUIREMENTS OF 37 C.F.R. § 42.121 .......................................... 2 
`
`IV.  THE PROPOSED SUBSTITUE CLAIMS ARE SUPPORTED
`BY U.S. PATENT APPLICATION SERIAL NO. 14/020,155 ........... 4 
`A. Substitute Independent Claim 62 ................................................ 4 
`B. 
`Substitute Dependent Claims 63-74 ........................................... 7 
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 8 
`
`V. 
`
`VI.  CLAIM CONSTRUCTION .................................................................. 9 
`
`VII.  THE PROPOSED SUBSTITUTE CLAIMS ARE
`PATENTABLE OVER THE CITED PRIOR ART .............................. 9 
`The Proposed Substitute Claims Are Patentable Over The
`A. 
`Prior Art At Issue In This Proceeding ................................................. 12 
`None of Petitioner’s references, alone or in combination,
`1. 
`teach or suggest extraction of a krill oil from dried krill
`meal made by grinding, cooking and drying E. superba .......... 13 
`2. None of Petitioner’s references, alone or in combination,
`teach or suggest encapsulated krill oil compositions
`comprising “from 5% to 8% ether phospholipids w/w of
`said krill oil.” ............................................................................. 15 
`None of Petitioner’s references, alone or in combination,
`teaches or suggests producing krill oil containing
`“astaxanthin esters in amount of from 100 mg/kg to 700
`mg/kg of said krill oil.” ............................................................. 19 
`A POSITA would not combine the references to arrive at
`the proposed substitute claims .................................................. 22 
`The Proposed Substitute Claims Are Patentable Over the
`B. 
`Prior Art at Issue During Prosecution ................................................. 24 
`
`3. 
`
`4. 
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`i
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`VIII.  CONCLUSION ................................................................................... 25 
`
`CERTIFICATE OF SERVICE ....................................................................... vi 
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`ii
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`
`LIST OF EXHIBITS
`
`
`IPR2018-01178
`U.S. Patent No. 9,375,453
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`2002
`
`2003
`
`2004
`
`EXHIBIT NO. EXHIBIT DESCRIPTION
`2001
`Declaration of Dr. Nils Hoem in Support of Patent Owner’s
`Response
`
`Yamaguchi, K. et al. “Supercritical Carbon Dioxide Extraction
`of Oils from Antarctic Krill”, J. Agric. Food Chem. 1986, 34,
`904-907
`
`Prescott, S. et al. “Platelet-Activating Factor and Related Lipid
`Mediators”, Annu. Rev. Biochem. 2000. 69:419-45
`
`Zimmerman, G. et al. “The platelet-activating factor signaling
`system and its regulators in syndromes of inflammation and
`thrombosis”, Crit. Care Med 2002, Vol. 30, No. 5 (Suppl):
`S294-S301
`
`Calder, P. “n-3 Polyunsaturated fatty acids, inflammation, and
`inflammatory diseases1-3”, Am. J. Clin. Nutr. 2006; 83(suppl):
`1505S-19S
`
`Fricke, H. et al. “1-O-Alkylglycerolipids in Antarctic Krill
`(Euphausia Superba DANA)”, Comp. Biochem. Physiol. Vol.
`85B, No. 1, pp. 131-134, 1986
`
`
`2005
`
`2006
`
`
`
`iii
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`

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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`Reply Declaration of Dr. Stephen J. Tallon, IPR2017-00745,
`U.S. Patent No. 9,078,905, dated January 24, 2018
`
`
`Zierenberg et al., Intestinal absorption of
`polyenephosphatidylcholine in man, J. Lipid. Res. (1982)
`23:1136-1142
`
`Blank et al., Meats and fish consumed in the American diet
`contain substantial amounts of ether-linked phospholipids. J
`Nutr. (1992) 122(8):1656-61
`
`Hartvigsen et al., 1-O-Alkyl-2-(w-oxo)acyl-sn-glycerols from
`Shark Oil and Human Milk Fat Are Potential Precursors of
`PAF Mimics and GHB. Lipids (2006) 41, 679–693
`
`Marathe et al., Inflammatory Platelet-activating Factor-like
`Phospholipids in Oxidized Low Density Lipoproteins Are
`Fragmented Alkyl Phosphatidylcholines. J. Biol. Chem. (1999)
`274(40):28395-28404
`
`U.S. Appl. 14/020,162 as filed
`
`Petition for Post Grant Review, U.S. Patent No. 9,644,170,
`Case No. PGR2018-00033
`
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`iv
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`2007
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`2008
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`
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`2009
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`2010
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`2011
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`2012
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`2013
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`Patent Abstract JP 04-057853 published February 25, 1992
`(Tsueno I)
`
`JP4057853 (Tsueno II)
`
`US Patent No. 4814111 (Kearns et al.)
`
`US Publication No. 20060078625 (Rockway)
`
`US Patent No. 8057825 (Sampalis III)
`
`WO 2007/136281
`
`Transcript of Deposition of Dr. Stephen Tallon, April 2, 2019
`
`Reserved
`
`Transcript of Deposition of Dr. Stephen Tallon, December 12,
`2018
`
`Petitioner’s Demonstrative Exhibit from IPR2018-00295
`
`Transcript of Deposition of Dr. Stephen Tallon, August 29,
`2018
`
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`v
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`I.
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`INTRODUCTION
`Patent Owner Aker BioMarine Antarctic AS (“Patent Owner” or “Aker”)
`
`respectfully moves under 35 U.S.C § 316(d) and C.F.R. § 42.121 to amend U.S.
`
`Patent No. 9,375,453 (“the ‘453 patent”), contingent on the outcome of this trial. In
`
`the event the Board finds independent claim 1 unpatentable, Patent Owner
`
`respectfully requests that the Board grant this motion to amend and issue the
`
`corresponding substitute claims presented herein.
`
`As the motion and the accompanying declaration of Dr. Hoem demonstrate,
`
`this motion and the substitute claims meet all the requirements of 37 C.F.R §
`
`42.121. Namely, each contingent amendment is responsive to a ground of
`
`unpatentability involved in this proceeding, none of the amendments seeks to
`
`enlarge the scope of the claims or introduce new subject matter, each amendment
`
`proposes no more than one substitute claim for each conditionally canceled claim,
`
`and the motion clearly shows the changes sought and the support in the original
`
`disclosure of the patent for each claim that is added or amended.
`
`Although Patent Owner respectfully believes that it should not bear the
`
`burden of either persuasion or production regarding the patentability of the
`
`proposed substitute claims as a condition of allowance, the instant motion and
`
`supporting declaration of Dr. Hoem demonstrate that the proposed substitute
`
`claims are patentable over the references at issue in this proceeding.
`
`
`
`1
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`

`

`
`II.
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`STATEMENT OF RELIEF REQUESTED
`To the extent the Board finds any original claim unpatentable in this
`
`proceeding, Patent Owner respectfully requests that the Board grant this motion to
`
`amend with respect to each corresponding substitute claim presented herein. The
`
`Board should not consider this motion for any original claim it finds patentable.
`
`III. THE SUBSTITUTE CLAIMS MEET ALL THE REQUIREMENTS
`OF 37 C.F.R. § 42.121
`
`As shown in the attached claims appendix (Appendix A), proposed
`
`substitute independent claim 62 retains all features of the corresponding original
`
`claim 1 of the ‘453 patent and does not broaden the scope of the claims in any way.
`
`Rather, the contingent amendments further define how the E. superba is treated to
`
`provide a starting material with denatured lipases and phospholipases and add
`
`upper limits to the ranges of two different components of the claimed encapsulated
`
`krill oil, each of which narrows the scope of the claims. Specifically, the substitute
`
`claims add the following limitations to the original claims: (1) treating freshly
`
`caught E. superba by grinding, cooking and drying to provide a dried krill meal in
`
`which the lipases and phospholipases are denatured; (2) an upper limit of 8%
`
`(w/w) and lower limit of 4% to the range of ether phospholipids (i.e., “from 4% to
`
`8%”) and removal of the modifier “greater than about” to provide a narrower
`
`claimed range; and (3) an upper limit of 700 mg/kg to the range of astaxanthin
`
`esters (e.g., “from 100 mg/kg to 700 mg/kg”) and removal of the modifier “greater
`2
`
`
`
`

`

`
`than about” to provide a narrower claimed range. For the same reasons, the
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`proposed substitute dependent claims 63-74 likewise do not broaden the scope of
`
`any original claim of the ’453 patent. See 37 C.F.R. § 42.121(a)(2)(ii).
`
`Proposed substitute independent claim 62 is further responsive to one or
`
`more grounds of unpatentability at issue in this proceeding. See 37 C.F.R. §
`
`42.121(a)(2)(i). Specifically, Petitioner in this proceeding has asserted that the
`
`cited prior art references disclose aspects of the original independent claims, which
`
`this motion conditionally seeks to amend. Compare IPR-2018-01178 Petition (the
`
`“Petition”) at 32-64 with Claims Appendix, infra.
`
`For each original claim of the ‘453 patent, Patent Owner proposes no more
`
`than one substitute claim. The substitute amended claims therefore comply with
`
`the “presumption…that only one substitute claim would be needed to replace each
`
`challenged claim,” and they present a reasonable number of substitute claims. 37
`
`C.F.R. § 42.121(a)(3).
`
`And as demonstrated in the next section, the proposed substitute claims are
`
`supported by U.S. Patent Appln. Serial No. 14/020,162 (Ex. 2012; “the ‘162
`
`application”), which is the originally filed application from which the ‘453 patent
`
`was granted; therefore, they do not introduce new subject matter. See 37 C.F.R. §
`
`42.121(a)(2)(ii).
`
`
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`3
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`IPR2018-01178
`U.S. Patent No. 9,375,453
`
`
`IV. THE PROPOSED SUBSTITUE CLAIMS ARE SUPPORTED BY U.S.
`PATENT APPLICATION SERIAL NO. 14/020,155
`The ‘453 patent was filed as U.S. Patent Appln. Serial No. 14/020,162 (Ex.
`
`2012; “the ‘162 application”) and is a continuation of Application No. 12/057,775,
`
`filed on March 28, 2008, now U.S. Patent No. 9,034,388. The ‘453 patent claims
`
`priority to U.S. Provisional Application No. 60/920,483, filed on March 28, 2007,
`
`U.S. Provisional Application No. 60/975,058, filed on September 25, 2007, U.S.
`
`Provisional Application No. 60/983,446, filed on October 29, 2007, and U.S.
`
`Provisional Application No. 61/024,072, filed on January 28, 2008.
`
`For purposes of this Motion to Amend, Patent Owner identifies the
`
`following portions of the ‘162 application (Ex. 2012) that provide § 112 support
`
`for the proposed substitute claims. As demonstrated below and in the
`
`accompanying Declaration of Dr. Hoem (Ex. 2001), one of ordinary skill in the art
`
`would have understood based on the disclosures of the ‘162 application that the
`
`inventors possessed the encapsulated krill oil compositions at the time the
`
`application was filed. Hoem Decl. (Ex. 1006) at ¶¶104-121.
`
`A. Substitute Independent Claim 62
`The ’162 application supports the preamble of proposed substitute
`
`independent claim 62. Extensive support is provided at multiple places in the
`
`
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`4
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`

`
`application for extraction of polar krill oil from E. superba. See, e.g., Ex. 2012 p. 5,
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`l. 29 – p. 6, l. 21; Examples 2-8 (p. 28-46); Ex. 2001 (Hoem Decl.) ¶106.
`
`The ‘162 application provides detailed support for producing a dried krill
`
`meal by grinding, cooking and drying E. superba. See, e.g., Ex. 2012 at p. 6, l. 12-
`
`21, p. 14, l. 8-18; Examples at p. 25, l. 7-8, p. 44, l. 10 – p. 45, l. 2; Tallon Decl.
`
`(Ex. 1006) at ¶170; Ex. 2001 (Hoem Decl.) ¶107. For example, the ‘162
`
`application teaches that with respect to the denatured krill product used for
`
`extraction: “In some embodiments, the denaturation step comprises heating said
`
`fresh krill after grinding.” Ex. 2012 at p. 6, l. 13-14. As taught in the Examples,
`
`meal for extraction was produced as follows: “Fresh krill was pumped from the
`
`harvesting trawl directly into an indirect steam cooker, and heated to 90C. Water
`
`and a small amount of oil were removed in a screw press before ethoxyquin
`
`(antioxidant) was added and the denatured meal was dried under vacuum at a
`
`temperature not exceeding 80C.” Ex. 2012 at p. 44, l. 10 – p. 45, l. 2. The lipases
`
`and phospholipases in the meal are described to be denatured. Ex. 2012 at p. 6, l.
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`10-11 and 20; p. 14, l. 8-14; Ex. 2001 (Hoem Decl.) ¶108.
`
`The ‘162 application provides support for extraction from krill meal with a
`
`polar solvent. Ex. 2012 at p. 15, l. 5-9; Examples 2-8; see also Tallon Decl. (Ex.
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`1006) at ¶137; Ex. 2001 (Hoem Decl.) ¶108.
`
`
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`5
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`

`

`The ‘162 application provides support for krill oil resulting from the
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`
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`extraction steps. With respect to the “4% to 8% ether phospholipid limitation, the
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`‘162 application discloses: “In some preferred embodiments, the krill oil
`
`compositions of the present invention comprise from about 1%, 2%, 3% or 4% to
`
`about 8%, 10%, 12% or 15% w/w ether phospholipids or greater than about 4%,
`
`5%, 6%, 7%, 8%, 9% or 10% ether phospholipids.” Ex. 2012 at 15; Tallon Decl.
`
`(Ex. 1006) ¶¶83-84; Ex. 2001 (Hoem Decl.) ¶109-111. The ‘162 application also
`
`supports “from about 27% to 50% non-ether phospholipids w/w of said krill oil so
`
`that the amount of total phospholipids in the composition is from about 30% to
`
`60% w/w of said krill oil.” Ex. 2012 at p. 7, l. 23 -p. 8, l. 2; p 16, l. 9-16; Ex. 2001
`
`(Hoem Decl.) ¶112. Support for “from about 20% to 50% triglycerides w/w of
`
`said krill oil” is also directly provided in the ‘162 application. Ex. 2012, p. 8, l. 14-
`
`22; Ex. 2012, Tables 13 and 21; Ex. 2001 (Hoem Decl.) ¶113.
`
`The ’162 application provides direct support for the astaxanthin ester range
`
`of 100 to 700 mg/kg. The ‘162 application discloses: “In some embodiments, the
`
`krill oil compositions comprise greater than about 100, 200, 300, 400, or 500
`
`mg/kg astaxanthin esters and up to about 700 mg/kg astaxanthin esters.” Ex. 2012,
`
`p. 17, l. 19-21; Tables 17C, 19C and 20C; Ex. 2001 (Hoem Decl.) ¶¶114-115.
`
`Petitioner acknowledges support for “astaxanthin esters in amount of from 100
`
`mg/kg to 700 mg/kg of said krill oil” in the specification of the ‘453 patent in a
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`
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`6
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`

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`related case, PGR2018-00033, challenging U.S. Patent No. 9,644,170 (identical
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`IPR2018-01178
`U.S. Patent No. 9,375,453
`
`specification to the ‘453 patent). In that case, Petitioner acknowledges, “The
`
`independent and dependent claims encompass astaxanthin esters amounts far
`
`greater than 0.25% (i.e., 2,500 mg/kg), the highest amount arguably supported by
`
`the ‘170 patent.” Ex. 2014 (PGR2018-00033 Petition; citing to Tallon Decl. Ex.
`
`1006 filed in PGR2018-00033).
`
`Finally, the ’162 application specifically discloses that the krill oil
`
`compositions can be “contained in acceptable excipients and/or carriers for oral
`
`consumption.” Ex. 2012, p. 19, l. 11-12; Ex. 2001 (Hoem Decl.) ¶116.
`
`Substitute Dependent Claims 63-74
`B.
`Proposed substitute dependent claims 63 to 74 generally correspond to
`
`original dependent claims 2 to 13 of the ‘453 patent and are amended only to
`
`reflect their new dependency from the amended substitute independent claims and
`
`to be consistent with substitute independent claim 62. The specification of the ‘162
`
`application supports all features of the proposed substitute dependent claims.
`
`Proposed dependent claims 68-70 further limit the astaxanthin ester ranges to 200,
`
`300 and 400 to 700 mg/kg astaxanthin esters, respectively. These claim limitations
`
`are supported as described above. See, Ex. 2012, p. 17, l. 19-21; see also, Ex.
`
`2012, Tables 17C, 19C, and 20C; Ex. 2001 (Hoem Decl.) ¶118. Proposed claims
`
`63 and 64 further define the krill oil made the process to comprise greater than
`
`
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`7
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`

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`40% or 45% phosphatidylcholine. Support for these limitations is found in the ‘162
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`application. Ex. 2012 at p. 17, l. 17-19; Ex. 2001 (Hoem Decl.) ¶119. Proposed
`
`claims 65, 71, and 72, which relate to omega-3 fatty acid content (i.e., at least 36%
`
`or 20-35%) and attachment to phospholipids, are supported by the specification.
`
`Ex. 2012, p. 16, l. 18-21; Ex. 2001 (Hoem Decl.) ¶120. Proposed claim 74, which
`
`provides that the extracted krill oil may further comprise a plant phytonutrient, is
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`supported by the specification. Ex. 2012, p. 20; Ex. 2001 (Hoem Decl.) ¶121.
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`Finally, formulation by encapsulation in gel capsules such as soft gels is directly
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`disclosed at multiple places in the ‘162 application. Ex. 2012, p. 43, l.; see also p.
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`19, l. 14-16; Tallon Decl. ¶125; Ex. 2001 (Hoem Decl.) ¶116.
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`Patent Owner respectfully submits that a person of ordinary skill in the art
`
`(“POSITA”) at the time the ‘162 application was filed would have held an
`
`advanced degree in marine sciences, biochemistry, organic (especially lipid)
`
`chemistry, chemical or process engineering, or associated sciences with
`
`complementary understanding, either through education or experience, of organic
`
`chemistry and in particular lipid chemistry, chemical or process engineering,
`
`marine biology, nutrition, or associated sciences; and knowledge of or experience
`
`in the field of extraction. In addition, a POSITA would have had at least five years
`
`applied experience. See, Tallon Decl. (Ex. 1006) ¶31.
`
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`8
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`

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`VI. CLAIM CONSTRUCTION
`The claims at issue should be given their broadest reasonable interpretation
`
`IPR2018-01178
`U.S. Patent No. 9,375,453
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`in light of the specification. 37 C.F.R. § 42.100(b); see also In re Translogic Tech.,
`
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (under the broadest reasonable
`
`construction standard, claims terms are given their ordinary and customary
`
`meaning as would be understood by one of ordinary skill at the time of the
`
`invention).
`
`In accordance with these standards, Patent Owner submits that, in relation to
`
`this Contingent Motion to Amend, the newly added claims terms define a range for
`
`ether phospholipids of from 4% to 8% of the krill oil produced in the extraction
`
`step and further define a range of astaxanthin esters of from 100 to 700 mg/kg of
`
`the extracted krill oil. As such, the claims do not encompass: 1) methods that
`
`produce krill oil compositions containing, for example, 2.88% or 3.84% ether
`
`phospholipids (e.g., if Extract 2 of Catchpole were diluted by 40% or 20%,
`
`respectively, to contain claimed amount of triglycerides); or 2) 1,000 (or more)
`
`mg/kg astaxanthin esters as taught in Breivik II. Ex. 2001 (Hoem Decl.) ¶122.
`
`VII. THE PROPOSED SUBSTITUTE CLAIMS ARE PATENTABLE
`OVER THE CITED PRIOR ART
`Patent Owner respectfully submits that it should not bear the burden of
`
`
`either persuasion or production regarding the patentability of the proposed
`
`substitute claims as a condition of allowing them, and further asserts that the Board
`9
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`may not sua sponte question the patentability of the proposed substitute claims.
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`Aqua Products, Inc. v. Matal, appeal no. 2015-1177, slip op. at 66 (Fed. Cir. 2017).
`
`Patent Owner nonetheless confirms that no combination of the cited prior art
`
`teaches or suggests the subject matter of the proposed substitute claims. This
`
`Contingent Motion to Amend and the supporting declaration of Dr. Hoem discuss
`
`the known art closest to the features highlighted above based on a review of the
`
`prior art in the prosecution history of the ’453 patent, the prosecution history of the
`
`applications to which it claims priority, and the asserted prior art in this
`
`proceeding. Patent Owner is not aware of any other prior art material to the
`
`claimed elements or the system as a whole. Consistent with its duty under 37
`
`C.F.R. § 42.11, Patent Owner discloses and distinguishes below not just the closest
`
`primary reference(s), but also the closest secondary references that might be
`
`deemed material to the claimed features. See VMWare, Inc. v. Clouding Corp.,
`
`IPR2014-01292, Paper 23 at 2 (PTAB April 7, 2015).
`
`The Petition alleges that all claims of the ‘453 patent are obvious over the
`
`cited prior art, and therefore, invalid. A patent is invalid as obvious only “if the
`
`differences between the claimed invention and the prior art are such that the
`
`claimed invention as a whole would have been obvious before the effective filing
`
`date of the claimed invention to a person of ordinary skill in the art to which the
`
`claimed invention pertains.” 35 U.S.C. § 103(a). To invalidate a claim for
`
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`10
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`obviousness, the prior art must teach or suggest each and every claimed feature.
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`IPR2018-01178
`U.S. Patent No. 9,375,453
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`CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
`
`Significantly, “a patent composed of several elements is not proved obvious
`
`merely by demonstrating that each of the elements was, independently, known in
`
`the prior art.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741 (2007). To prove
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`obviousness based on more than one reference, one must show that (1) a person of
`
`ordinary skill in the art would have been motivated to combine the references, and
`
`(2) there would have been a reasonable expectation of successfully achieving the
`
`claimed invention from such combination. See Leo Pharma. Prods., Ltd. v. Rea,
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`726 F.3d 1346, 1355-57 (Fed. Cir. 2013); see also In re Kubin, 561 F.3d 1351,
`
`1359 (Fed. Cir. 2009) (“courts should not succumb to hindsight claims of
`
`obviousness”). Moreover, secondary considerations “can be the most probative
`
`evidence of nonobviousness” and are useful to “avert the trap of hindsight.’” Leo
`
`Pharma., 726 F.3d at 1358 (internal citation omitted). These secondary
`
`considerations may include commercial success, copying, and prior art that teaches
`
`away from the claimed inventions. See, e.g., Kinetic Concepts, Inc. v. Smith &
`
`Nephew, Inc., 688 F.3d 1342, 1370 (Fed. Cir. 2012).
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`11
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`IPR2018-01178
`U.S. Patent No. 9,375,453
`
`A.
`
`The Proposed Substitute Claims Are Patentable Over The Prior
`Art At Issue In This Proceeding
`The Petition in this proceeding relies on a combination of four main prior art
`
`references to support the allegation that original independent claim 1 is obvious,
`
`and therefore, invalid. Petitioner asserts that Breivik II (Ex. 1037) provides
`
`limitations relating to the extractions steps and starting materials, while Catchpole
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`(Ex. 1009) provides the ether phospholipid, non-ether phospholipid and total
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`phospholipid ranges, Bottino II (Ex. 1038) provides the triglyceride range, and
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`Breivik II (Ex. 1037) provides the astaxanthin range. The fourth reference in the
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`base combination applied against independent claim 1, Sampalis I (Ex. 1012), is
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`cited by Petitioner for the formulation and soft gel capsule limitations.
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`The proposed substitute claims retain all features of the corresponding
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`original claim 1 of the ‘453 patent and do not broaden the scope of the claims.
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`Rather, the contingent amendments further specify how the E. superba is treated to
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`provide a material (dried krill meal with denatured lipases and phospholipases) for
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`extraction and adds upper limits to the ranges of two different components of the
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`krill oil extracted from the dried krill meal, each of which narrows the scope of the
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`claims. Specifically, the substitute claims add the following limitations to the
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`original claims: (1) treating freshly caught E. superba by grinding, cooking and
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`drying to provide a dried krill meal in which the lipases and phospholipases are
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`denatured; (2) an upper limit of 8% (w/w) and lower limit of 4% to the range of
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`ether phospholipids (i.e., “from 4% to 8%”) and removal of the modifier “greater
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`than about” to provide a narrower claimed range; and (3) an upper limit of 700
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`mg/kg to the range of astaxanthin esters (e.g., “from 100 mg/kg to 700 mg/kg”)
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`and removal of the modifier “greater than about” to provide a narrower claimed
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`range.
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`As demonstrated below, none of Petitioner’s prior art references teaches
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`these limitations as recited in the proposed substitute claims.
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`None of Petitioner’s references, alone or in combination, teach or
`1.
`suggest extraction of a krill oil from dried krill meal made by grinding,
`cooking and drying E. superba
`The Petition in this proceeding relies on Breivik II for the claim element in
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`original claim 1 of “treating the Euphausia superba to denature lipases and
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`phospholipases to provide a denatured krill product.” ‘1178 Petition at 34-36. The
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`substitute claims require “treating freshly caught Euphausia superba by grinding,
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`cooking and drying the Euphausia superba to provide a dried krill meal, wherein
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`lipases and phospholipases in the Euphausia superba are denatured.” Breivik II
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`does not teach extraction from a dried krill meal that has been prepared by
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`grinding, cooking and drying E. superba. Hoem Decl. (Ex. 2001) ¶¶48-52, 125-
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`126. The other cited references which contain data on extraction (i.e., Catchpole,
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`Bottino II, Sampalis II and Fricke 1984) use freeze-dried krill powder, fresh or
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`frozen krill and thus do not teach this claim element. Id. at ¶127.
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`In fact, the prior art as a whole teaches away from using dried krill meal in a
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`process for producing an oral intended for consumption. Hoem Decl. (Ex. 2001)
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`¶125. Yamaguchi et al. teaches that polymerized and oxidized material in krill
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`meal limits extraction of oil from krill meal. Ex. 2002 at 2. Breivik II agrees,
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`relying directly on Yamaguchi et al. for the teaching that “oil in krill meal was
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`deteriorated by oxidation or polymerisation to such an extent that only limited
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`extraction occurred with supercritical CO2.” Ex. 1037 at 0002. Breivik II then
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`teaches that whole, fresh krill or whole body parts from krill should be used to
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`provide a product with improved quality. Id. As further stated in Breivik II:
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`“because the krill lipids oxidise very rapidly, and become less soluble in common
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`solvents, the person of skill in the art will realise that a similar high quality krill
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`meal could not be obtained by de-fatting of traditional krill meal, for example by
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`use of organic solvents.” Id. at 0010. Thus, it is clear that Breivik leads a POSITA
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`away from utilizing krill meal made by processes such as grinding, cooking and
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`drying E. superba for extraction of krill oil. Hoem Decl. (Ex. 2001) ¶125.
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`Breivik II does teach that krill meal made by a “mild” procedure can be used
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`for extraction. Ex. 1037 at 0011. However, as found by Dr. Hoem, no description
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`of such a method is provided in Breivik II and such a method would not involve
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`grinding, cooking and drying E. superba to provide a dried krill meal. Hoem Decl.
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`(Ex. 2001) ¶126. Additionally it is likely that any such process would be wet
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`process and not involve a drying step where oxidation and polymerization are
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`likely to occur. Id.
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`Accordingly, the cited references do not teach the claim element of
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`extraction from a dried krill meal made by grinding, cooking and drying E.
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`superba and actually teach away from such a method step.
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`2. None of Petitioner’s references, alone or in combination, teach or
`suggest encapsulated krill oil compositions comprising “from 5% to 8% ether
`phospholipids w/w of said krill oil.”
`Regarding original claim 1 of the ‘453 patent, Petitioner alleges that
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`Catchpole discloses a krill oil extract having 4.8% ether phospholipids (see, e.g.,
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`Ex. 1009, Table 16, Extract 2). ‘1178 Petition at 40-41. Regarding original claim
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`14 of the ‘453 patent, Petitioner alleges that “greater than about 4% w/w ether
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`phospholipids” should be construed to include a range greater than 3.5%, which
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`includes the 4.8% ether phospholipids disclosed in Catchpole. ‘1178 Petition at 30-
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`31, 48.
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`Proposed substitute claim 62, which is based on original claim 1, is directed
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`to a method of producing a krill oil comprising from 4% to 8% w/w ether
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`phospholipids. The combined references do not provide a reasonable expectation
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`of success of arriving at a method of producing a krill oil with from 4% to 8%
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`ether phospholipids and which also contains a maximum of 60% total
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`phospholipids and 20% to 50% triglycerides. Ex. 2001 (Hoem Decl.) ¶129. As
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`demonstrated below, the Catchpole extraction method removed all of the neutral
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`lipids, including triglycerides, from the krill starting material in the first step of the
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`extraction, so that Catchpole Extract 2 (resulting from a second extraction step)
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`could not contain neutral lipids such as triglycerides. In order to have the claimed
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`maximum amount of total phospholipids of 60% (or the minimum amount of 20%
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`triglycerides), it would be necessary to dilute Catchpole Extract 2 so that the ether
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`phospholipid content is below the claimed range of 4% to 8% and the ether
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`phospholipid content of Catchpole could not be easily increased.
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`Catchpole is the only reference cited by Petitioner that provides an ether
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`phospholipid content for a lipid extract from krill. Specifically, Table 16 of
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`Catchpole indicates that Extract 2 contains 4.8% ether phospholipids. Ex. 1009 at
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`0024. However, Catchpole used a two-step method for producing Extract 2. The
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`first step utilized neat CO2 to remove neutral lipids and the second step used CO2
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`plus ethanol to extract to obtain a fraction comprising phospholipids (i.e., Extract
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`2). Id. Catchpole specifically discloses that “the feed material can be processed
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`using pure CO2 before the co-solvent is introduced to remove much or all of
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`neutral lipids.” Id. at 0011. When describing the experimental process in detail,
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`Catchpole further provides that “[t]he extraction was optionally carried out using
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`CO2 only until all of the compounds soluble in CO2 only, such as neutral lipids,
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`were extracted.” Id. at 0013 (emphasis added).” See, e.g., Hoem Decl. (Ex. 2001)
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`¶¶54-55.
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`These statements are consistent with the teaching in Example 18 of
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`Catchpole that the krill starting material was extracted with neat CO2 in the first
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`step until “no further extract was obtained” and indicate to a POSITA that the
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`process was intended to remove all neutral lipids (including triglycerides) in the
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`first step. Ex. 1009 at 0024; Hoem Decl. (Ex. 2001) ¶¶54-55, 128-129. The fact
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`that all neutral lipids were removed during the first step is further confirmed by
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`data contained in Catchpole Example 18. The lipid percentages observed in Fricke
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`1984 or Bottino II can be used to estimate the neutral lipid (and triglyceride)
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`content of the starting krill feed material used in Example 18 of Catchpole because
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`that material had not been pre-extracted. Hoem Decl. (Ex. 2001) ¶58. Catchpole
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`discloses that 650 grams of neutral lipids were extracted from the krill starting
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`material in the first step. Ex. 1009 at 0024. If the average neutral lipid content
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`from the Fricke 1984 samples (53.8%) is multiplied by the total lipid content of the
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`Catchpole Example 18 starting material (1203 g) then the estimated neutral lipids
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`for the krill starting material is 647 g. Hoem Decl. (Ex. 2001) ¶59. This amount
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`closely corresponds to the reported 650 g neutral lipids that were removed in step 1
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`and supports the fact that all neutral lipids were removed during step 1 of Example
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`18. Id.
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`Petitioner alleges that a POSITA would look to references such as Bottino II
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`to determine the triglyceride content of a polar krill oil. ‘1178 Petition at 42-43.
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`However, as just discussed, Catchpole achieved 4.8% ether phospholipids only in
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`an extract from which all neutral lipids had been removed