`
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`
`RIMFROST AS
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`Patent Owner.
`
`____________________________
`
`Case IPR-2018-01179
`
`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
`INTRODUCTION ................................................................................. 1
`I.
`
`IPR2018-01179
`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 75 .................................................................4
`B.
`Substitute Dependent Claims 76-84 .............................................................7
`LEVEL OF ORDINARY SKILL IN THE ART .................................. 8
`
`V.
`
`VI. CLAIM CONSTRUCTION .................................................................. 8
`
`VII. THE PROPOSED SUBSTITUTE CLAIMS ARE
`PATENTABLE OVER THE CITED PRIOR ART .............................. 9
`
`The Proposed Substitute Claims Are Patentable Over The Prior Art
`A.
`At Issue In This Proceeding ...................................................................................11
`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 ...................................................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
`
`4.
`
`3.
`
`The Proposed Substitute Claims Are Patentable Over the Prior Art
`B.
`at Issue During Prosecution ...................................................................................24
`VIII. CONCLUSION ................................................................................... 25
`
`CERTIFICATE OF SERVICE ....................................................................... vi
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`
`
`i
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`IPR2018-01179
`U.S. Patent No. 9,375,453
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`
`LIST OF EXHIBITS
`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
`
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`
`
`ii
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`IPR2018-01179
`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
`
`
`iii
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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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`IPR2018-01179
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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
`
`
`iv
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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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`IPR2018-01179
`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 33 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,
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`and the motion clearly shows the changes sought and the support in the original
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`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.
`
`
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`1
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`
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`II.
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`IPR2018-01179
`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
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`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 75 retains all features of the corresponding original
`
`claim 33 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,
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`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
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`upper limit of 8% (w/w) and lower limit of 5% to the range of ether phospholipids
`
`(i.e., “from 5% 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
`2
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`
`
`
`
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`modifier “greater than about” to provide a narrower claimed range. For the same
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`U.S. Patent No. 9,375,453
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`reasons, the proposed substitute dependent claims 76-84 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 75 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-2018-01179 Petition (the
`
`“ ‘1179 Petition”) at 32-64 with Claims Appendix, infra.
`
`For each original claim of the ‘453 patent, Patent Owner proposes no more
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`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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`U.S. Patent No. 9,375,453
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`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.
`
`Substitute Independent Claim 75
`A.
`The ’162 application supports the preamble of proposed substitute
`
`independent claim 75. Extensive support is provided at multiple places in the
`
`
`
`4
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`
`
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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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`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
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`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.
`
`1006) at ¶137; Ex. 2001 (Hoem Decl.) ¶108.
`
`
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`5
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`
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`The ‘162 application provides support for krill oil resulting from the
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`
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`extraction steps. With respect to the “5% 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%,
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`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
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`said krill oil” is also directly provided in the ‘162 application. Ex. 2012, p. 8, l. 14-
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`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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`IPR2018-01179
`U.S. Patent No. 9,375,453
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`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, formulation by encapsulation in soft gel capsules is directly
`
`disclosed at multiple places in the ‘162 application. Ex. 2012, p. 43, l.; see also p.
`
`19, l. 14-16; Tallon Decl. ¶125; Ex. 2001 (Hoem Decl.) ¶116.
`
`Substitute Dependent Claims 76-84
`B.
`Proposed substitute dependent claims 76 to 84 generally correspond to
`
`original dependent claims 37 to 45 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 75. The specification of the ‘162
`
`application supports all features of the proposed substitute dependent claims.
`
`Proposed dependent claims 79-81 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
`
`76 and 77 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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`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
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`claims 78, 82, and 83, 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.
`
`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
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`complementary understanding, either through education or experience, of organic
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`chemistry and in particular lipid chemistry, chemical or process engineering,
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`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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`VI. CLAIM CONSTRUCTION
`The claims at issue should be given their broadest reasonable interpretation
`
`in light of the specification. 37 C.F.R. § 42.100(b); see also In re Translogic Tech.,
`
`
`
`8
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`
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`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (under the broadest reasonable
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`U.S. Patent No. 9,375,453
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`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
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`ether phospholipids of from 5% to 8% of the krill oil produced in the extraction
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`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, 4.8% ether phospholipids
`
`(e.g., as contained in Catchpole Extract 2); 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
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`may not sua sponte question the patentability of the proposed substitute claims.
`
`Aqua Products, Inc. v. Matal, appeal no. 2015-1177, slip op. at 66 (Fed. Cir. 2017).
`
`
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`9
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`Patent Owner nonetheless confirms that no combination of the cited prior art
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`
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`teaches or suggests the subject matter of the proposed substitute claims. This
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`Contingent Motion to Amend and supporting declaration of Dr. Hoem discuss the
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`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.,
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`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
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`differences between the claimed invention and the prior art are such that the
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`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
`
`obviousness, the prior art must teach or suggest each and every claimed feature.
`
`CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
`
`
`
`10
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`
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`Significantly, “a patent composed of several elements is not proved obvious
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`U.S. Patent No. 9,375,453
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`merely by demonstrating that each of the elements was, independently, known in
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`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
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`obviousness”). Moreover, secondary considerations “can be the most probative
`
`evidence of nonobviousness” and are useful to “avert the trap of hindsight.’” Leo
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`Pharma., 726 F.3d at 1358 (internal citation omitted). These secondary
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`considerations may include commercial success, copying, and prior art that teaches
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`away from the claimed inventions. See, e.g., Kinetic Concepts, Inc. v. Smith &
`
`Nephew, Inc., 688 F.3d 1342, 1370 (Fed. Cir. 2012).
`
`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
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`
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`11
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`
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`limitations relating to the extractions steps and starting materials, while Catchpole
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`U.S. Patent No. 9,375,453
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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
`
`base combination applied against independent claim 1, Sampalis I (Ex. 1012), is
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`cited by Petitioner for the soft gel capsule limitations.
`
`The proposed substitute claims retain all features of the corresponding
`
`original claim 33 of the ‘453 patent and do not broaden the scope of the claims.
`
`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 5% to the range of
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`ether phospholipids (i.e., “from 5% 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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`12
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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 33 of “treating the Euphausia superba to denature lipases and
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`phospholipases to provide a denatured krill product.” ‘1179 Petition at 34-37. 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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`13
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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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`14
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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 33 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). ‘1179 Petition at 40-41. Regarding original claim
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`55 of the ‘453 patent, Petitioner alleges that “greater than about 5% w/w ether
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`phospholipids” should be construed to include a range greater than 4.5%, which
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`includes the 4.8% ether phospholipids disclosed in Catchpole. ‘1179 Petition at 30-
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`31, 48.
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`Proposed substitute claim 75, which is based on original claim 33, is
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`directed to a method of producing a krill oil comprising from 5% to 8% w/w ether
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`phospholipids. Catchpole teaches that its Extract 2 contains 4.8% ether
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`phospholipids which is outside of the claimed range of 5% to 8% ether
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`phospholipids. None of the other references teach or suggest krill oils that contain
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`from 5% to 8% ether phospholipids. Catchpole does contain general statements
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`that “the product” of the invention can greater than 5%, 10% or 25%
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`15
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`alkylacylphospholipids and/or plasmalogens. However, Catchpole does not state
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`that krill oil contain these levels of alkylacylphospholipids and/or plasmalogens. A
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`POSITA reading the specification of Catchpole would understand that the only
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`disclosure of a krill oil in Catchpole is Extract 2 in Example 18 and that that krill
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`oil contained 4.8% ether phospholipids. Ex. 2001 (Hoem Decl.) ¶66, ¶126.
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`Furthermore, the combined references do not provide a reasonable
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`expectation of success of arriving at a method of producing a krill oil with from
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`5% to 8% ether phospholipids and which also contains a maximum of 60% total
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`phospholipids and 20% to 50% triglycerides. As demonstrated below, the
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`Catchpole extraction method removed all of the neutral lipids, including
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`triglycerides, from the krill starting material in the first step of the extraction, so
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`that Catchpole Extract 2 (resulting from a second extraction step) could not contain
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`neutral lipids such as triglycerides. In order to have the claimed maximum amount
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`of total phospholipids of 60% (or the minimum amount of 20% triglycerides), it
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`would be necessary to dilute Catchpole Extract 2 so that the ether phospholipid
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`content is below the claimed range of 5% to 8% and the ether phospholipid content
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`of Catchpole could not be easily increased. Ex. 2001 (Hoem Decl.) ¶128.
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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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`16
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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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`17
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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 correspon