UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`_________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________________
`
`
`RIMFROST AS
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`Patent Owner.
`
`____________________________
`
`Case IPR2018-01730
`
`U.S Patent No. 9,072,752
`
`_______________________
`
`
`
`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.  
`
`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`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. 14/620,784 ........... 3 
`
`A.
`Substitute Independent Claims 21 and 28 ....................................................4 
`B. 
`Substitute Dependent Claims 63-74 .............................................................6 
`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 
`1. None of Petitioner’s references, alone or in combination, teach or
`suggest encapsulated krill oil compositions comprising “from 6%
`to 10% ether phospholipids w/w of said krill oil.” ....................................12 
`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.” ......................17 
`A POSITA would not combine the references to arrive at the
`proposed substitute claims .........................................................................19 
`
`2. 
`
`3. 
`
`The Proposed Substitute Claims Are Patentable Over the Prior Art
`B. 
`at Issue During Prosecution ...................................................................................20 
`VIII.  CONCLUSION ................................................................................... 21 
`
`CERTIFICATE OF SERVICE ....................................................................... iv 
`
`
`
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`
`i
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`

`
`LIST OF EXHIBITS
`
`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`
`
`EXHIBIT DESCRIPTION
`
`Declaration of Dr. Nils Hoem in Support of Patent Owner’s
`Response and Motion to Amend
`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
`Reserved
`Zierenberg et al., Intestinal absorption of
`polyenephosphatidylcholine in man, J. Lipid. Res. (1982) 23:1136-
`1142
`
`ii
`
`EXHIBIT
`NO.
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`
`
`
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`

`

`IPR2018-01730
`U.S. Patent No. 9,072,752
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`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. 14/020,784 as filed
`Petition for Post Grant Review, U.S. Patent No. 9,644,170, Case No.
`PGR2018-00033
`Patent Abstract JP 04-057853 published February 25, 1992 (Tsuneo)
`Reserved
`U.S. Patent No. 4,814,111
`Reserved
`US Pat. Publ. 2006/0193962 (Kamiya)
`WO 2007/136281
`Transcript of Deposition of Dr. Stephen Tallon, June 4, 2019
`Reserved
`Transcript of Deposition of Dr. Stephen Tallon, December 12, 2018
`Reserved
`Transcript of Deposition of Dr. Stephen Tallon, August 29, 2018
`
`iii
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`
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`2009
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`2010
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`2011
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`2012
`2013
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`2014
`2015
`2016
`2017
`2018
`2019
`2020
`2021
`2022
`2023
`2024
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`
`I.
`
`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`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. 9,072,752 (“the ‘752 patent”), contingent on the outcome of this trial. In
`
`the event the Board finds the claims 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.
`
`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`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 claims 21 and 28 retain all features of the corresponding
`
`original claims 1 and 14 of the ‘752 patent and does not broaden the scope of the
`
`claims in any way. Rather, the contingent amendments further limit the ether
`
`phospholipid and astaxanthin ranges of the claimed krill oil, each of which narrows
`
`the scope of the claims. Specifically, the substitute claims add the following
`
`limitations to the original claims: (1) a range of ether phospholipids of from 6 to
`
`10% w/w of the krill oil; (2) a range of astaxanthin esters of from 100 mg/kg to
`
`700 mg/kg of the claimed krill oil; and (3) removal of the modifier “about” from
`
`the claimed ether phospholipid ranges to provide a narrower claimed range. For the
`
`same reasons, the proposed substitute dependent claims 22 to 27 and 29 likewise
`
`do not broaden the scope of any original claim of the ’752 patent. See 37 C.F.R. §
`
`42.121(a)(2)(ii).
`
`
`
`2
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`

`

`Proposed substitute independent claims 21 and 28 are further responsive to
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`IPR2018-01730
`U.S. Patent No. 9,072,752
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`
`
`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 IPR2018-01730 Petition (the
`
`“Petition”) with Claims Appendix, infra.
`
`For each original claim of the ‘752 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. 14/620,784 (Ex. 2012; “the ‘784
`
`application”), which is the originally filed application from which the ‘752 patent
`
`was granted; therefore, they do not introduce new subject matter. See 37 C.F.R. §
`
`42.121(a)(2)(ii).
`
`IV. THE PROPOSED SUBSTITUE CLAIMS ARE SUPPORTED BY U.S.
`PATENT APPLICATION SERIAL NO. 14/620,784
`The ‘752 patent was filed as U.S. Patent Appln. Serial No. 14/620,784 (Ex.
`
`2012; “the ‘784 application”) and is a continuation of Application No. 12/057,775,
`
`
`
`3
`
`

`

`
`filed on March 28, 2008, now U.S. Patent No. 9,034,388. The ‘752 patent claims
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`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`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 ‘784 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 ‘784 application that the
`
`inventors possessed the claimed krill oil compositions at the time the application
`
`was filed. Hoem Decl. (Ex. 1006) at ¶¶114-123.
`
`A. Substitute Independent Claims 21 and 28
`The ’784 application supports the preamble of proposed substitute
`
`independent claims 21 and 28. Extensive support is provided at multiple places in
`
`the application for extraction of polar krill oil from krill in general and E. superba.
`
`See, e.g., Ex. 2012 at p. 4, l. 12 –16; p. 17, l. 8-26; and Examples 2-8 (p. 28-46);
`
`Ex. 2001 (Hoem Decl.) ¶116.
`
`The ‘784 application provides support for krill oil containing from 6 to 10%
`
`ether phospholipids. With respect to the “6% to 10%” ether phospholipid
`
`
`
`4
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`

`

`
`limitation, the ‘784 application discloses: “In some preferred embodiments, the
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`IPR2018-01730
`U.S. Patent No. 9,072,752
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`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 16; See also
`
`Tallon Decl. (Ex. 1006) ¶71; Ex. 2001 (Hoem Decl.) ¶¶117-118. The ‘784
`
`application also supports the limitation of “greater than about 40%
`
`phosphatidylcholine” in proposed claim 21 and “greater than about 45%
`
`phosphatidylcholine” in proposed claim 28. Support for these limitations is found
`
`in the ‘784 application (Ex. 2012) at p. 17, l. 17-19; Ex. 2001 (Hoem Decl.) ¶119.
`
`The ’784 application provides direct support for the astaxanthin ester range
`
`of 100 to 700 mg/kg. The ‘784 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.) ¶¶120-121.
`
`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 ‘752 patent in a
`
`related case, PGR2018-00033, challenging U.S. Patent No. 9,644,170 (identical
`
`specification to the ‘752 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
`
`
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`5
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`

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`the ‘170 patent.” See Ex. 2014 at 55-56 (PGR2018-00033 Petition; citing to Tallon
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`IPR2018-01730
`U.S. Patent No. 9,072,752
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`Decl. Ex. 1006 filed in PGR2018-00033).
`
`Independent claim 28 contains additional limitations that are not in
`
`independent claim 21. The ‘784 application provides direct support for the claim
`
`limitation of “less than about 25% triglycerides w/w of said krill oil.” Ex. 2012, p.
`
`17, l. 16-17; Ex. 2001 (Hoem Decl.) ¶122. Likewise, the ‘784 application provides
`
`direct support for the claim limitation of “at least 36% omega-3 fatty acids w/w of
`
`said krill oil.” Ex. 2012, p. 17, l. 22-23; Ex. 2001 (Hoem Decl.) ¶122.
`
`Substitute Dependent Claims 63-74
`B.
`Proposed substitute dependent claims 22 to 27 and 29 generally correspond
`
`to original dependent claims 2-5, 11-13 and 20 of the ‘752 patent and are amended
`
`only to reflect their new dependency from the amended substitute independent
`
`claims and to be consistent with substitute independent claims 21 and 28. The
`
`specification of the ‘784 application supports all features of the proposed substitute
`
`dependent claims.
`
`Proposed dependent claim 22 further defines the krill oil to comprise greater
`
`than about 45% phosphatidylcholine. Support for this limitation is found in the
`
`‘784 application (Ex. 2012) at p. 17, l. 17-19; Ex. 2001 (Hoem Decl.) ¶124.
`
`Proposed dependent claim 23 further defines the krill oil to comprise less than
`
`about 25% triglycerides w/w. Support for this limitation is found in the ‘784
`
`
`
`6
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`

`

`
`application (Ex. 2012) at p. 17, l. 16-17; Ex. 2001 (Hoem Decl.) ¶124. Proposed
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`IPR2018-01730
`U.S. Patent No. 9,072,752
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`dependent claim 24 further defines the krill oil to comprise at least 36% omega-3
`
`fatty acids w/w. Support for this limitation is found in the ‘784 application (Ex.
`
`2012) at p. 17, l. 22-23; Ex. 2001 (Hoem Decl.) ¶124. Proposed dependent claim
`
`25 further defines the krill oil to be suitable for oral administration to a human.
`
`Support for this limitation is found in the ‘784 application (Ex. 2012) at p. 5, l. 8-
`
`10 and p. 8, l. 23 – p. 10, l. 3; Ex. 2001 (Hoem Decl.) ¶124. Proposed dependent
`
`claim 26 further specifies that the krill oil is extracted from Euphausia superba.
`
`Support for this limitation is found in the ‘784 application (Ex. 2012) at p. 4, l. 12
`
`–16; p. 17, l. 8-26; and in Examples 2-8 (p. 28-46) ; Ex. 2001 (Hoem Decl.) ¶124.
`
`Proposed dependent claims 27 and 29 specify that the krill oil is provided in
`
`a capsule. The ‘784 application supports encapsulation of the polar oil for oral
`
`administration. Example 5 of the ‘784 application discloses that “[t]he asta oil
`
`obtained in example 1 was blended with the polar lipids obtained in example 4 in a
`
`ratio of 46:54 (v/v). Next, the ethanol was removed by evaporation and a dark red
`
`and transparent product was obtained. The product was analyzed and the results
`
`can be found in Tables 20A-C. Furthermore, the product was encapsulated into soft
`
`gels successfully.” Ex. 2012, p. 43; see also p. 8, l. 30 – p. 9., l. 2; p. 19, l. 11-12;
`
`Ex. 2001 (Hoem Decl.) ¶125.
`
`
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`7
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`

`
`V.
`
`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`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 ‘784 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) ¶34.
`
`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.,
`
`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 claim terms define a range for
`
`ether phospholipids of from 6% to 10% in the krill oil compositions and further
`
`
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`8
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`

`
`define a range of astaxanthin esters of from 100 to 700 mg/kg of the extracted krill
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`IPR2018-01730
`U.S. Patent No. 9,072,752
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`oil compositions. As such, the claims do not encompass: 1) krill oil compositions
`
`containing, for example, 4.8% ether phospholipids; or 2) 1,000 (or more) mg/kg
`
`astaxanthin esters as taught in Randolf or Grynbaum.
`
`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
`
`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).
`
`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 ’752 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
`
`
`
`9
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`

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`primary reference(s), but also the closest secondary references that might be
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`IPR2018-01730
`U.S. Patent No. 9,072,752
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`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 ‘752 patent are anticipated or
`
`obvious over the cited prior art, and therefore, invalid. This motion addresses
`
`obviousness of the claims as the Petition did not argue that claims that contain both
`
`ether phospholipid and astaxanthin limitations were anticipated by Catchpole. 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 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). 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 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
`
`
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`10
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`

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`Pharma. Prods., Ltd. v. Rea, 726 F.3d 1346, 1355-57 (Fed. Cir. 2013); see also In
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`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`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).
`
`A.
`
`The Proposed Substitute Claims Are Patentable Over The Prior
`Art At Issue In This Proceeding
`The Petition in this proceeding relies on five prior art references to support
`
`the allegations that the original claims are anticipated or obvious, and therefore,
`
`invalid. Petitioner asserts that Catchpole (Ex. 1009) provides the ether
`
`phospholipid ranges, that Enzymotec (Ex. 1048) provides the phosphatidylcholine
`
`and triglyceride ranges, that Sampalis II provides the omega-3 fatty acid ranges
`
`and encapsulation limitation, and that Grynbaum and Randolf provide the
`
`astaxanthin limitations.
`
`The proposed substitute claims retain all features of the corresponding
`
`original claim 1 of the ‘752 patent and do not broaden the scope of the claims.
`
`Rather, the contingent amendments further limit the claims by requiring the ether
`
`
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`11
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`phospholipid content to be from 6 to 10% w/w of the krill oil and require that the
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`IPR2018-01730
`U.S. Patent No. 9,072,752
`
`krill oil contain from 100 to 700 mg/kg astaxanthin esters. As demonstrated below,
`
`none of Petitioner’s prior art references teaches these limitations as recited in the
`
`proposed substitute claims.
`
`1. None of Petitioner’s references, alone or in combination, teach or
`suggest encapsulated krill oil compositions comprising “from 6% to 10%
`ether phospholipids w/w of said krill oil.”
`Regarding original independent claims 1 and 14 of the ‘752 patent,
`
`Petitioner alleges that Catchpole discloses a krill oil extract having 4.8% ether
`
`phospholipids as shown in Example 18, Table 16 of Ex. 1009. Petition at 31.
`
`Petitioner interprets “greater than about 5%” in the original claims to mean
`
`“greater than 4.5%” and thus alleges that the 4.8% ether phospholipids disclosed in
`
`Table 16 meets the limitation. Petitioner further alleges that the general statement
`
`in Catchpole that the compositions of the invention may contain greater than 5% or
`
`10% acylalkylphospholipids and/or plasmalogens provides the claim limitations of
`
`greater than about 6% and 7% ether phospholipids in original dependent claims 5,
`
`6, 15 and 16. Petition at 34-35, 62. In the Institution Decision, the Board stated:
`
`
`With respect to claims 5 and 6, we are not satisfied that Petitioner has
`established a reasonable likelihood that it would prevail in showing that
`dependent claims 5 and 6 are anticipated by Catchpole. While we agree
`with Petitioner that Catchpole teaches compositions that can contain greater
`than 10% acylalkylphospholipids, we do not agree that Catchpole discloses a
`
`12
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`

`

`
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`krill oil composition having that amount of acylalkylphospholipids.
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`Institution Decision at 11. However, with respect to obviousness, the Board did
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`U.S. Patent No. 9,072,752
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`indicate that:
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`At this stage in the proceeding, for the reasons discussed by Petitioner (see
`Pet. 55-56), we are satisfied that Petitioner has established a reasonable
`likelihood that it would prevail in showing the unpatentability of dependent
`claims 5 and 6 in view of Catchpole and Enzymotec.
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` Institution Decision at 18. The Board applied similar reasoning to dependent
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`claims 15 and 16. Id. at 20. The evidence presented below establishes that neither
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`Catchpole alone nor the combination of Catchpole and Enzymotec (or the other
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`cited references) anticipates or renders the proposed substitute claims obvious.
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`Proposed substitute claims 21 and 28 are directed in part to krill oil
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`comprising from 6% to 10% w/w ether phospholipids. The only disclosure of a
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`krill oil in Catchpole is provided in Example 18. The Extract 2 krill oil disclosed
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`in Table 16 of Example 18 allegedly contained 4.8% ether phospholipids. Ex.
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`2001 (Hoem Decl.) ¶129. As found in the Institution Decision, the statements in
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`Catchpole concerning compositions containing greater than 5% or 10%
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`acylalkylphospholipids and/or plasmalogens are generic statements that do not
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`refer to krill oil. Id. Catchpole teaches feed materials from a virtually unlimited
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`number of organisms can be used. Id. Thus, there is no reason for a POSITA to
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`conclude that the statements in Catchpole referring to compositions containing
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`greater than 5% or 10% acylalkylphospholipids and/or plasmalogens apply to krill
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`U.S. Patent No. 9,072,752
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`oil especially where the only example of a krill oil in Catchpole allegedly contains
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`4.8% ether phospholipids. Id. As a result, Catchpole does not teach a krill oil that
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`contains from 6 to 10% ether phospholipids and does not anticipate or render the
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`proposed substitute claims obvious.
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`Furthermore, the combined references do not provide a reasonable
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`expectation of success of arriving at krill oil with from 6 to 10% w/w ether
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`phospholipids. Ex. 2001 (Hoem Decl.) ¶130. As specifically taught in Example
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`18 of Catchpole, the ether phospholipid AAPC was “highly enriched” in Extract 2.
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`Ex. 1009 at 0024. Thus, a POSITA would not reasonably expect that the ether
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`phospholipid content could be further enriched. Ex. 2001 (Hoem Decl.) ¶130. In
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`particular, the Catchpole extraction method removed all of the neutral lipids,
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`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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`with an ethanol co-solvent) could not contain neutral lipids such as triglycerides.
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`Id. Since neutral lipids were removed in the first step of the Catchpole extraction,
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`it would not be possible to increase the content of ether phospholipids in Extract 2
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`by further removal of neutral lipids. Id. Thus, a POSITA would understand based
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`on the teachings of Catchpole that 4.8% ether phospholipids was the maximum
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`amount that could be obtained in a krill oil and a POSITA would not seek to
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`modify the Catchpole krill oil (Extract 2) to contain the claimed range of 6 to 10%
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`U.S. Patent No. 9,072,752
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`ether phospholipids. Id.
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`Nor would a POSITA be motivated to combine references such as Catchpole
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`and Enzymotec (and for that matter Sampalis II, Grynbaum and/or Randolf) to
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`arrive at a krill oil with the claimed 6-10% ether phospholipid content. Ex. 2001
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`(Hoem Decl.) ¶¶131-133. A POSITA would not use the ether phospholipid
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`content of Catchpole Extract 2 to calculate an estimated ether phospholipid content
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`for the Enzymotec Grade B krill lecithin (or the Sampalis II krill oil). Id. Dr.
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`Tallon proposes such a calculation at ¶¶240-241 and 461-463 of his Declaration
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`(Ex. 1006).
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`However, a POSITA would not make this type of calculation because
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`Catchpole Example 18 Extract 2 and the Enzymotec Grade B krill lecithin extracts
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`are different extracts with different lipid profiles. Ex. 2001 (Hoem Decl.) ¶¶132-
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`133. For example, the Enzymotec Grade B krill lecithin contains
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`phosphatidylinositol and has reported levels of lysophosphatidylcholine while
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`Catchpole Extract 2 is reported to contain 0.0% phosphatidylinositol and does not
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`report the lysophosphatidylcholine level. Ex. 2001 (Hoem Decl.) ¶¶47, 91-94.
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`Example 18 of Catchpole further teaches that the ether phospholipid AAPC was
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`“highly enriched” in Extract 2. However, the ether phospholipid AAPE “was not
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`extracted to any great degree.” Ex. 1009 at 0024. These statements and data
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`indicate to a POSITA that the extraction conditions of Catchpole (a two-step SFE
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`U.S. Patent No. 9,072,752
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`method) produced an extract with a specific lipid profile that is enriched for
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`AAPC. Ex. 2001 (Hoem Decl.) ¶132. The extraction conditions used in
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`Enzymotec are not specifically disclosed and there is no indication that a two-step
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`SFE procedure was utilized. Id.
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`A POSITA would understand that different extraction conditions would lead
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`to krill oils with different lipid profiles and therefore would not use the percentage
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`of ether phospholipids obtained in Catchpole to predict the ether phospholipid
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`content in extracts such as the Enzymotec Grade B krill lecithin. Id. In addition to
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`having a different lipid profile that the Catchpole Extract 2 krill oil, Enzymotec
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`does not disclose the specific method (e.g., specific solvents and extraction
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`conditions) used to extract the Grade A or Grade B krill lecithin. Id. Thus, there is
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`no basis for a POSITA to conclude that the ether phospholipid levels observed in
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`Catchpole Extract 2 could be used estimate the ether phospholipid levels of the
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`Enzymotec Grade B krill lecithin. Ex. 2001 (Hoem Decl.) ¶¶133. As a result, there
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`is no motivation to combine Catchpole and Enzymotec to provide a krill oil with
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`from 60 to 10% ether phospholipids and a POSITA would understand that the
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`combined references do not provide a reasonable expectation of success in arriving
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`at the claimed krill oil compositions.
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`
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`None of Petitioner’s references, alone or in combination, teaches
`2.
`or suggests producing krill oil containing “astaxanthin esters in amount of
`from 100 mg/kg to 700 mg/kg of said krill oil.”
`Proposed substitute claims 21 and 27 are also directed to krill oil
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`compositions comprising “from 100 mg/kg to 700 mg/kg astaxanthin esters.”
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`Petitioner alleges that the astaxanthin ester limitations are met by Sampalis II,
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`Grynbaum or Randolf. See Petition at p. 37, 43-47, 64-65.
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`
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`As admitted by Petitioner’s expert, “Sampalis II discloses a krill oil extract
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`with, in my opinion, a minimum trans-astaxanthin esters content of 1,444 mg/kg
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`(2000 mg/kg x .95 x .76).” Ex. 1006, ¶304. Grynbaum teaches an astaxanthin ester
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`content of krill of 7842 mg/kg and Randolf teaches compositions with an
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`astaxanthin content of at least 10,000 mg/kg. Ex. 2001 (Hoem Decl.) ¶¶135; see
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`also admission by Dr. Tallon that “Randolph’s 1 percent astaxanthin content is
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`equivalent to 10,000 mg/kg.” Ex. 1006, ¶284. Accordingly, Patent Owner
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`respectfully submits that the failure of Petitioner’s cited prior art to disclose
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`“astaxanthin esters in amount of from 100 mg/kg to 700 mg/kg of said krill oil”
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`precludes establishment of a prima facie case of obviousness.
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`Furthermore, Patent Owner respectfully submits that the cited prior art
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`teaches away from krill oil containing “from 100 to 700 mg/kg astaxanthin esters”
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`as recited in proposed substitute claims 21 and 28. Hoem Decl. (Ex. 2001) ¶¶136-
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`137. Dr. Tallon confirms that Krill Bill (Neptune Krill Oil) contained greater than
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`1500 mg/kg astaxanthin esters. See Exhibit 1070, p. 0003; Tallon Decl. (Ex. 1006)
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`at ¶18. Dr. Tallon further confirmed that Randolf teaches that its compositions
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`should contain 1% astaxanthin (i.e., 10,000 mg/kg). Ex. 1006, ¶284. Dr. Tallon
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`further stated that: “Before the effective filing date of the ‘752 Patent, a POSITA
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`was aware that astaxanthin (both free and esterified), the called “super Vitamin E”,
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`possesses an unusual antioxidant activity which had caused a surge in the
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`nutraceutical market for the encapsulated astaxanthin product.” Ex. 1006, ¶89.
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`When deposed for related IPR 2018-00295, Dr. Tallon admitted “in general,
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`there’s certainly plenty of motivation for higher levels of astaxanthin. And the krill
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`oil products that were on the market, it was