RIMFROST AS,
`Petitioner,
`v.
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`
`IPR2020-01532
`U.S. Patent No. 9,644,169
`
`IPR2020-01533
`U.S. Patent No. 9,816,046
`
`PETITIONER’S DEMONSTRATIVES
`For Petitioner
`Lead Counsel: James F. Harrington, Esq. Reg. No: 44,741
`First Back Up Counsel: Michael I. Chakansky, Esq. Reg. No: 31,600
`Back Up Counsel: John T. Gallagher, Esq. Reg. No: 35,516
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`RIMFROST EXHIBIT 1172 SLIDE 01
`
`
`Petitioner,
`v.
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`
`IPR2020-01532
`U.S. Patent No. 9,644,169
`
`IPR2020-01533
`U.S. Patent No. 9,816,046
`
`PETITIONER’S DEMONSTRATIVES
`For Petitioner
`Lead Counsel: James F. Harrington, Esq. Reg. No: 44,741
`First Back Up Counsel: Michael I. Chakansky, Esq. Reg. No: 31,600
`Back Up Counsel: John T. Gallagher, Esq. Reg. No: 35,516
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`RIMFROST EXHIBIT 1172 SLIDE 01
`
`
`
`‘169 Patent Invalidity Grounds
`‘169 Petition, IPR2020-01532, Paper 2, p. 10
`
`TABLE I
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claims
`Challenged
`
`1
`
`2
`
`Breivik II (EX1037)
`Catchpole (EX1009)
`Budziński (EX1008)
`Fricke (EX1010)
`Randolph (EX1011)
`
`Breivik II (EX1037)
`Catchpole (EX1009)
`Budziński (EX1008)
`Fricke (EX1010)
`Randolph (EX1011)
`Sampalis I (EX1012)
`
`35 U.S.C.
`
`1-5, 7-15, 17-20
`
`§ 103(a)
`
`35 U.S.C.
`
`§ 103(a)
`
`6, 16
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 02
`
`
`
`‘046 Patent Invalidity Grounds
`‘046 Petition, IPR2020-01533, Paper 2, pp. 10-11
`
`Ground
`
`References
`
`TABLE II
`
`Basis
`
`Claims Challenged
`
`1
`
`2
`
`3
`
`Breivik II (EX1037), Yoshitomi
`(EX1033), Budziński (EX1008),
`Fricke (EX1010),
`Bottino II (EX1038),
`Sampalis I (EX1012)
`
`Breivik II (EX1037), Yoshitomi
`(EX1033), Budziński (EX1008),
`Fricke (EX1010),
`Bottino II (EX1038),
`Randolph (EX1011)
`
`Breivik II (EX1037), Yoshitomi
`(EX1033), Budziński (EX1008),
`Fricke (EX1010),
`Bottino II (EX1038),
`Randolph (EX1011),
`Sampalis I (EX1012)
`
`35 U.S.C. §103(a)
`
`1-10
`
`35 U.S.C. §103(a)
`
`11, 12
`
`35 U.S.C. §103(a)
`
`13-19
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 03
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 04
`
`
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 05
`
`
`
`SELECT CLAIM LIMITATIONS AND PRIOR ART
`
`See, e.g., ‘169 Petition, Claim Chart, IPR2020-01532, Paper 2, pp. 69-89; ‘046 Petition, Claim Chart, IPR2020-
`01533, Paper 2, pp. 69-88; ‘169 Tallon Dec., EX1006 ¶¶ 435-501; ‘046 Tallon Dec., EX1006 ¶¶ 414-526.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 06
`
`
`
`SELECT CLAIM LIMITATIONS AND PRIOR ART [CONTINUED]
`
`See, e.g., ‘169 Petition, Claim Chart, IPR2020-01532, Paper 2, pp. 69-89; ‘046 Petition, Claim Chart, IPR2020-
`01533, Paper 2, pp. 69-88; ‘169 Tallon Dec., EX1006 ¶¶ 435-501; ‘046 Tallon Dec., EX1006 ¶¶ 414-526.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 07
`
`
`
`PATENT OWNER ADMITS THAT MANY CLAIM LIMITATIONS
`WOULD HAVE BEEN KNOWN TO A POSITA
`
`• Patent Owner, who in previous IPRs had vigorously argued that certain of
`its patents’ claim limitations were not obvious, now argues in order to fill
`in the gaps in its reduction to practice argument that these same patent
`claim limitations would have been obvious to a POSITA. ‘169 POR,
`Paper 9, pp. 24-35; ‘046 POR, Paper 9, pp. 25-38.
`
`• Patent Owner and its experts rely on the testimony of Petitioner’s expert
`Dr. Tallon’s to support the obviousness of these claim limitations. See,
`‘169 Tilseth Dec., EX2001 at ¶ 17; ‘169 Jaczynski Dec., EX2015 at ¶¶ 25-
`30; ‘046 Tilseth Dec., EX2001 at ¶ 17; ‘046 Jaczynski Dec., EX2015 at ¶¶
`24-29.
`
`• Patent Owner’s expert Dr. Jaczynski agreed at his deposition that these
`claim limitations would have been obvious to a POSITA. Jaczynski Dep.
`EX1170, pp. 44-47, 56-58, 61-65.
`
`See ‘169 Petitioner’s Reply, Paper 15, pp. 12-13, 17-18; ‘046 Petitioner’s Reply, Paper 15, 1, pp. 12-13, 17-18;
`and ‘169 Tallon Reply Dec., EX1086, ¶¶ 24-27, pp. 12-16; ‘046 Tallon Reply Dec., EX1086, ¶¶ 13, 25-28, pp.
`14-17.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 08
`
`
`
`SELECT PATENT OWNER’S ‘169 POSITA ADMISSIONS FOR ANTEDATION
`
`‘169 Tallon Reply Dec., EX1086, ¶ 26, pp. 14-15.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 09
`
`
`
`SELECT PATENT OWNER’S ‘046 POSITA ADMISSIONS FOR ANTEDATION
`
`‘046 Tallon Reply Dec., EX1086, ¶ 27, pp. 15-16.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 10
`
`
`
`COLLATERAL
`ESTOPPEL APPLIES
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 11
`
`
`
`‘169 AND ‘046 PATENTS FAMILY CHART
`
`‘169 Petition, Paper 2 at 11; ‘046 Petition, Paper 2 at 11; ‘169 Tallon Dec., EX1006, ¶ 32, p. 23; ‘046 Tallon Dec., EX1006, ¶ 33, p.
`24. Since the ‘169 and ‘046 Petitions were filed, all claims of the ‘453 patent (65 claims), 752 patent (20 claims) and ‘765 patent
`(48 claims) have been cancelled.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 12
`
`
`
`COLLATERAL ESTOPPEL APPLIES
`• The Board previously relied on all references in finding
`five other “krill oil” patents in the same family as the
`‘169 patent and the ‘046 patent unpatentable, with the
`exception of Budziński and its disclosure of krill meal
`storage for at least 13 months. Exhibits 1103-1104,
`1129, 1157-1159.
`
`• The inclusion of an intuitive and common sense
`storage limitation of 1-24 and 1-36 months does not
`materially alter the question of the ‘169 patent’s and
`the ‘046 patent’s unpatentability or the Board’s
`previous analysis of the prior art.
`
`See ‘169 Petition, IPR2020-01532, Paper 2, pp. 39-42; ‘046 Petition, IPR2020-01533, Paper 2, pp. 38-40;
`‘169 Petitioner’s Reply, Paper 15, pp. 6-7; ‘046 Petitioner’s Reply, Paper 15, pp. 6-7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 13
`
`
`
`THE BOARD APPLIED ALL THE ‘169 IPR & THE ‘046 IPR
`REFERENCES IN EARLIER IPRS, EXCEPT FOR BUDZIŃSKI
`
`‘169 patent
`(2020-
`01532)
`
`‘046 patent
`(2020-
`1553)
`
`√
`
`√
`√
`√
`√
`
`√
`
`Catchpole
`
`Breivik II
`Sampalis I
`Randolph
`Fricke
`
`Budziński
`
`Yoshitomi
`Bottino II
`Breivik I
`
`√
`√
`√
`√
`
`√
`
`√
`√
`
`‘453 patent
`(2018-
`01178);
`(2018-
`01179)
`√
`
`√
`√
`√
`√
`
`√
`√
`
`‘877 patent
`(2017-
`00746)
`
`‘765 patent
`(2018-
`00295)
`
`‘905 patent
`(2017-
`00745)
`
`‘752 patent
`(2018-
`01730)
`
`√
`
`√
`√
`√
`√
`
`√
`
`√
`
`√
`
`√
`
`√
`
`√
`
`√
`
`√
`
`√
`
`See ‘169 Petition, IPR2020-01532, Paper 2, pp. 39-42; ‘046 Petition, IPR2020-01533, Paper 2, pp. 38-40;
`‘169 Petitioner’s Reply, Paper 15, pp. 6-7; ‘046 Petitioner’s Reply, Paper 15, pp. 6-7; see also ‘169 Tallon
`Dec., EX1006, ¶¶ 33-34 & p.23; ‘046 Tallon Dec., EX1006, ¶¶ 34-35 & p.24.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 14
`
`
`
`EXAMPLES OF CLAIM
`LIMITATIONS ALREADY
`FOUND OBVIOUS IN
`PRIOR IPRS.
`
`‘877 PATENT IPR: FWD All
`Claims Obvious (EX1104); affirmed,
`Aker Biomarine Antarctic AS v.
`Rimfrost AS, 2019 U.S. App. LEXIS
`29656 (EX1154).
`
`‘453 PATENT IPRs: FWDs All
`Claims Obvious (EX1157 &
`EX1158).
`
`See ‘169 Tallon Dec., EX1006 at ¶ 34 & Appendix F, p.0317; ‘169 Petition, Paper 2, p. 41; see also ‘046 Petition,
`Paper 2, p. 40; ‘046 Tallon Dec., EX1006 at ¶ 35.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 15
`
`
`
`EXAMPLES OF CLAIM
`LIMITATIONS ALREADY
`FOUND OBVIOUS IN
`PRIOR IPRS
`(CONTINUED).
`
`‘877 PATENT IPR: FWD All
`Claims Obvious (EX1104); affirmed,
`Aker Biomarine Antarctic AS v.
`Rimfrost AS, 2019 U.S. App. LEXIS
`29656 (EX1154).
`
`‘453 PATENT IPRs: FWDs All
`Claims Obvious (EX1157 &
`EX1158).
`
`See ‘169 Tallon Dec., EX1006 at ¶ 34 & Appendix F, p.0317; ‘169 Petition, Paper 2, p. 41; see also ‘046
`Petition, Paper 2, p. 40; ‘046 Tallon Dec., EX1006 at ¶ 35.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 16
`
`
`
`EXAMPLES OF
`CLAIM
`LIMITATIONS
`ALREADY FOUND
`OBVIOUS IN
`PRIOR IPRS.
`
`‘877 PATENT IPR: FWD
`All Claims Obvious
`(EX1104); affirmed, Aker
`Biomarine Antarctic AS v.
`Rimfrost AS, 2019 U.S. App.
`LEXIS 29656 (EX1154).
`
`‘453 PATENT IPRs: FWDs
`All Claims Obvious
`(EX1157 & EX1158).
`
`See ‘046 Petition, Paper 2, p. 40; ‘046 Tallon Dec., EX1006 at ¶ 35; see also ‘169 Tallon Dec., EX1006 at ¶ 34
`& Appendix F, p.0317; ‘169 Petition, Paper 2, p. 41.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 17
`
`
`
`EXAMPLES OF
`CLAIM
`LIMITATIONS
`ALREADY FOUND
`OBVIOUS IN
`PRIOR IPRS.
`
`‘877 PATENT IPR: FWD
`All Claims Obvious
`(EX1104); affirmed, Aker
`Biomarine Antarctic AS v.
`Rimfrost AS, 2019 U.S. App.
`LEXIS 29656 (EX1154).
`
`‘453 PATENT IPRs: FWDs
`All Claims Obvious
`(EX1157 & EX1158).
`
`See ‘046 Petition, Paper 2, p. 40; ‘046 Tallon Dec., EX1006 at ¶ 35; see also ‘169 Tallon Dec., EX1006 at ¶ 34
`& Appendix F, p.0317; ‘169 Petition, Paper 2, p. 41.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 18
`
`
`
`THE FEDERAL CIRCUIT AGREED WITH THE BOARD
`
`In affirming the Board’s Final Written Decisions in the ‘908 and ‘877 IPRs
`(IPR2017-00745 and IPR2017-00746, EX1103 & EX1104), the Federal Circuit
`noted that the Board’s findings were supported by substantial evidence:
`
`“After weighing the evidence, the Board found that the lipid components of
`krill oil can be extracted using any number of suitable solvents, that the
`proportions of the components could be varied in predictable ways, and
`that the resulting extracts could be blended to produce a final krill oil product.
`The Board credited expert testimony from Dr. Tallon that a person of skill
`could draw on an extensive body of established, industrial knowledge of
`methods and parameters that could be used to produce a stable product with
`known compositions. . . .”
`
`Aker Biomarine Antarctic AS v. Rimfrost AS, 2019-1097, 2019-1078, 2019 U.S.
`App. LEXIS 29656, at * 7 (Fed. Cir. Oct. 3, 2019) (emphasis added) (EX1154).
`
`See ‘169 Petition, IPR2020-01532, Paper 2, pp. 15-16; ‘046 Petition, IPR2020-01533, Paper 2, p. 16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 19
`
`
`
`PATENT OWNER CANNOT TAKE POSITIONS
`INCONSISTENT WITH PRIOR ADVERSE JUDGMENT
`
`37 CFR § 42.73 Judgment.
`
`(d) Estoppel.
`
`***
`(3) Patent applicant or owner. A patent applicant or owner is
`precluded from taking action inconsistent with the adverse judgment,
`including obtaining in any patent:
`
`(i) A claim that is not patentably distinct
`from a finally refused or canceled claim . . . .
`
`See ‘169 Petition, IPR2020-01532, Paper 2, p. 42; ‘046 Petition, IPR2020-01533, Paper 2, p. 40.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 20
`
`
`
`“KRILL MEAL”
`
`“PROCESSED KRILL WITH REDUCED
`WATER CONTENT FROM WHICH OIL
`CAN BE EXTRACTED.”
`
`See ‘169 Petitioner’s Reply, Paper 15, p. 2; See ‘046 Petitioner’s Reply, Paper 15, p. 2; ‘‘169 Tallon
`Dec., EX1006, ¶¶ 134-152; ‘169 Tallon Reply Dec., EX1086, ¶¶ 34-43; ‘046 Tallon Dec., EX1006,
`¶¶ 138-156; ‘046 Tallon Reply Dec., EX1086, ¶¶ 38-47.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 21
`
`
`
`COMPLAINING OF PETITIONER’S APPROACH OF LOOKING TO THE
`PATENTS TO CONSTRUE THE TERM “KRILL MEAL” FIRST, PATENT
`OWNER IMPROPERLY STARTS ITS ANALYSIS OF WITH A DICTIONARY
`DEFINITION OF MEAL WHICH IS FOCUSED ON PLANT SEEDS NOT
`KRILL OR MARINE ANIMALS
`
`•
`
`“[Petitioner’s expert] Dr. Tallon’s analysis does not establish the plain and ordinary
`meaning of the term ‘meal’ as a starting point. The Cambridge English Dictionary
`defines meal as ‘a substance that has been crushed to make a rough powder,
`especially plant seeds crushed to make flour or for animal food.’ Ex. 2016”. ‘046
`POR, Paper 9 at 9; ‘169 POR, Paper 9 at 9.
`
`EX2016, p. 0001
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 22
`
`
`
`PETITIONER’S ‘169 IPR & ‘046 IPR “KRILL MEAL” CONSTRUCTION
`IS SUPPORTED BY INTRINSIC EVIDENCE; NOT DICTIONARIES
`
`PETITIONER’S PROPOSED
`CONSTRUCTION
`
`PATENT OWNER’S PROPOSED
`CONSTRUCTION
`
`processed krill with reduced
`water content from which oil
`can be extracted
`
`‘169 Tallon Dec., EX1006, ¶¶ 134-152;
`‘169 Tallon Reply Dec., EX1086, ¶¶ 34-43;
`‘046 Tallon Dec., EX1006, ¶¶ 138-156;
`‘046 Tallon Reply Dec., EX1086, ¶¶ 38-47.
`
`krill powder resulting from
`the processing of krill.
`
`‘169 POR, Paper 9, pp. 8-12.
`‘046 POR, Paper 9, pp. 8-11.
`
`See also ‘169 Petitioner’s Reply, Paper 15, p. 2; ‘046 Petitioner’s Reply, Paper 15, p. 2.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 23
`
`
`
`PATENT OWNER’S REMAINING ARGUMENTS FOR ITS “KRILL MEAL”
`CONSTRUCTION ARE EXPRESSLY REFUTED BY THE PATENTS’ SPECIFICATIONS
`
`Patent Owner’s two arguments in support of its construction of “krill meal” are meritless. ‘169
`Patent Owner’s Sur-Reply, Paper 18 at 6-7; ‘046 Patent Owner’s Sur-Reply, Paper 18 at 6-7.
`
`1. Patent Owner argues “[t]here is no example in the specification where ‘krill meal’ is used to
`describe whole krill that has simply been dehydrated.”
`
`• Petitioner’s construction does not require that the krill material be
`dehydrated, merely that it have a “reduced water content” and there are
`examples of the in the patents, including where, as admitted by Patent
`Owner, the krill is merely pressed to remove water.
`
`2. Patent Owner argues, that all of the krill meal examples from the patents relied on by
`Petitioner are the result of a being “processed by a step (e.g., pressing, grinding, etc.) that
`results in a krill product with a reduced particle size, i.e., a powder.” Thus, Patent Owner
`argues that krill meal must be a powder.
`
`• Reduced particle size does not necessarily result in a powder and the
`patents provide examples where it is not.
`‘169 Petitioner’s Reply, Paper 15, pp. 2-6; ‘046 Petitioner’s Reply, Paper 15, pp. 2-6; ‘169 Tallon Reply Dec.,
`EX1086 at ¶ 43; ‘169 Tallon Reply Dec., EX1086 at ¶ 47; see also ‘169 Tallon Reply Dec., EX1086 at ¶¶ 34-42;
`‘169 Tallon Reply Dec., EX1086 at ¶¶ 39-46; ‘169 Tallon Dec., EX1006 at ¶¶ 134-152; ‘046 Tallon Dec.,
`EX1006 at ¶¶ 138-156.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 24
`
`
`
`PATENT OWNER’S REMAINING ARGUMENTS FOR ITS “KRILL MEAL”
`CONSTRUCTION ARE EXPRESSLY REFUTED BY THE PATENTS’ SPECIFICATIONS
`[CONTINUED]
`“In some embodiments, freshly caught krill is wet pressed to obtain oil and
`meal. In some embodiments, the meal is then heated to a temperature of
`about 50° C. to about 100° C. for about 20 minutes to about an hour, 55
`preferably about 40 minutes to denature the proteins. In some embodiments,
`this material is then pressed to yield a press cake.”
`‘169 Patent, EX1001, 10:50-57, p. 0030 (emphasis supplied); ‘046 Patent,
`EX1001, 10:50-57, p. 0030 (emphasis supplied).
`
`“Fresh krill was pumped from the harvesting trawl directly into an indirect
`steam cooker, and heated to 90 C. 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
`80 C.”
`‘169 Patent, EX1001, 41:62-67, p. 0041 (emphasis supplied); ‘046 Patent,
`EX1001, 41:62-67, p. 0041 (emphasis supplied).
`
`See ‘169 Petitioner’s Reply, Paper 15 at 4; ‘046 Petitioner’s Reply, Paper 15 at 4; ‘169
`Tallon Dec. at ¶¶ 135, 141-142; ‘046 Tallon Dec. at ¶¶ 139, 145-146.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 25
`
`
`
`PATENT OWNER’S REMAINING ARGUMENTS FOR ITS “KRILL MEAL”
`CONSTRUCTION ARE EXPRESSLY REFUTED BY THE PATENTS’ SPECIFICATIONS
`[CONTINUED]
`
`Dr. Tallon testified:
`
`• “Krill materials formed by a screw press or a wet press
`[both described in the patent] and the resulting
`products including press cake [as described in the
`patent] are not powdered krill materials. Nor does the
`mere reduction in the particle size of krill materials
`equate to the formation of a krill powder.”
`
`‘169 Tallon Reply Dec., EX1086 at ¶ 43; ‘046 Tallon
`Reply Dec., EX1086 at ¶ 47.
`
`‘169 Petitioner’s Reply, Paper 15, pp. 2-6; ‘046 Petitioner’s Reply, Paper 15, pp. 2-6.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 26
`
`
`
`PATENT OWNER’S “KRILL MEAL” CONSTRUCTION IS INCONSISTANT
`WITH CLAIMS AS ITS PROVIDES FOR A KRILL MEAL AND THUS KRILL
`OIL WITHOUT ANY OF THE CLAIMED PHOSPHOLIPIDS
`
`Dr. Tallon testified:
`
`• “Notably, as construed by PO, PO’s ‘krill meal’ would
`by definition include completely dilipidated krill meal,
`i.e., a krill material without any lipids and, as such, no
`krill oil could be extracted from PO’s “krill meal” a
`material requirement of all the claims.”
`
`‘169 Tallon Reply Dec., EX1086 ¶ 38, fn.3; ‘046 Tallon Reply Dec., EX1086 ¶ 38, fn.3; see also
`‘169 Petitioner’s Reply, Paper 15, p. 2; ‘046 Petitioner’s Reply, Paper 15, p. 2.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 27
`
`
`
`NO REDUCTION TO PRACTICE
`BY PATENT OWNER
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 28
`
`
`
`EFFECTIVE FILING DATES OF
`‘169 and ‘046 PATENTS AND BREIVIK II
`
`• Effective Filing Date of ‘169 patent is January 28, 2008 (filing date of
`the ‘072 provisional, EX1002, as this is the first disclosure of ether
`phospholipids, which are required by all ‘169 patent claims). ‘169
`Petition, p. 11, ‘169 Tallon Dec., EX1006 at ¶¶ 31-32, 53-54.
`
`• Effective Filing Date of ‘046 patent is March 28, 2007 (filing date of the
`‘483 provisional, EX1005). ‘046 Petition, p. 11, ‘046 Tallon Dec.,
`EX1006 at ¶¶ 31-32.
`
`• Effective Filing Date of Breivik II is November 16, 2006 (filing date of
`the Breivik Provisional, EX1036). ‘169 Petition, p. 12, ‘169 Tallon Dec.,
`EX1006 at ¶ 242; ‘046 Petition, p. 12, ‘046 Tallon Dec., EX1006 at ¶¶
`226-238.
`
`• Patent Owner is alleging a Reduction to Practice prior to November 16,
`2006. ‘169 POR, Paper 9, p. 20; ‘046 POR, Paper 9, p. 20.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 29
`
`
`
`PATENT OWNER’S BURDEN TO PROVE ACTUAL
`REDUCTION TO PRACTICE
`
`• Patent Owner “bears the burden of establishing that its claimed invention is
`entitled to an earlier priority date than an asserted prior art reference.” In re
`Magnum Oil Tools, 829 F.3d 1364, 1375-76 (Fed. Cir. 2016).
`
`• Patent Owner must prove an actual reduction to practice before Breivik II’s
`priority date, “not [that Petitioner must] prove [Patent Owner] did not.” Apator
`Miitors ApS v. Kamstrup A/S, 887 F.3d 1293, 1297 (Fed. Cir. 2018).
`
`• To satisfy this burden, Patent Owner must demonstrate performance of a
`process meeting all limitations of the claimed invention and show the invention
`worked for its intended purpose. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
`1169 (Fed. Cir. 2006).
`
`• Evidence of actual reduction to practice cannot rest on inventor testimony, and
`Patent Owner must proffer independent evidence corroborating Dr. Tilseth’s
`testimony. Medichem, 473 F.3d at 1170-72 (“Even the most credible inventor
`testimony is a fortiori required to be corroborated by independent evidence. . . .”).
`See‘169 Petitioner’s Reply, Paper 15, pp. 8-9; ‘046 Petitioner’s Reply, Paper 15, pp. 8-9.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 30
`
`
`
`PATENT OWNER’S ANTEDATION PROOFS ARE INSUFFICIENT
`
`A reduction to practice must meet all claim limitations:
`
`When the issue of priority concerns the antedating
`of a reference, the applicant is required to
`demonstrate . . . that the applicant was in
`possession of the later-claimed invention before
`the effective date of the reference.
`
`In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015)
`(emphasis added).
`
`See‘169 Petitioner’s Reply, Paper 15, p. 16; ‘046 Petitioner’s Reply, Paper 15, p. 16.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 31
`
`
`
`PATENT OWNER’S ANTEDATION PROOFS ARE INSUFFICIENT
`
`• Patent Owner’s argument that Breivik II does not qualify as prior art
`rests on the testimony of Dr. Tilseth, an inventor of both the ‘169
`patent and the ‘046 patent, that the invention recited in the patents was
`actually reduced to practice before Breivik II’s November 16, 2006 priority
`date. See, e.g., ‘169 and ‘046 POR, Paper 9, pp. 20-24.
`
`• Patent Owner failed to provide evidence corroborating, inter alia, that
`the krill had been “cooked,” and if “cooked,” heated to a temperature
`sufficient to “denature lipases and phospholipases” which as testified to
`by Dr. Tilseth, “occurs at the cooking stage”.
`
`• The absence of independent corroboration of Dr. Tilseth’s testimony
`that denaturation had occurred during the alleged krill processing “cooking
`stage” is fatal to Patent Owner’s attempt to antedate Breivik II.
`
`See‘169 Petitioner’s Reply, Paper 15, pp. 7-8; ‘046 Petitioner’s Reply, Paper 15, p. 7.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 32
`
`
`
`DR. TILSETH’S TESTIMONY THAT DENATURATION OCCURS
`DURING THE “COOKING STAGE” IS BASED SOLELY ON HIS
`INTERPRETATION OF SECTIONS 6.1-6.2 OF EX2003
`
`•
`
`“Sections 6.1 and 6.2 of Ex. 2003 (p. 0022-23) describe production and
`sampling of the krill meal during different production steps. The
`Atlantic Navigator was equipped with a standard compact fish meal
`factory. The krill meal was produced by a standard meal process where
`fresh krill is brought on board the ship, cooked, pressed and decanted, and
`then dried to provide the krill meal. The krill meal had a reduced particle
`size as compared to the fresh krill and was a powder as discussed below.
`Heating of the krill material sufficient to denature lipases and
`phospholipases occurs at the cooking stage prior to decanting/
`pressing. This meal is the same meal described in Example 1 of the ‘169
`Patent [‘046 Patent] (Ex. 1001 at pp. 0034-35) and Example 1 of the
`priority document U.S. Prov. Appl. 60/920,483 filed March 28, 2007 (Ex.
`1005 at pp. 0023-26).”
`
`‘169 Tilseth Dec., EX2001 at ¶ 8 (emphasis supplied); ‘046 Tilseth Dec., EX2001 at
`¶ 8 (emphasis supplied); see also ‘169 Petitioner’s Reply, Paper 15, pp. 9-10; ‘046
`Petitioner’s Reply, Paper 15, pp. 9-10.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 33
`
`
`
`THERE IS NO CORROBORATION SUPPORTING DR. TILSETH’S
`REDUCTION TO PRACTICE STORY THAT A DENATURED KRILL
`PRODUCT WAS FORMED
`
`Contrary to Patent Owner’s assertions, there is no reference to any
`cooking step, much less heating krill to a temperature sufficient to
`denature of krill lipases and phospholipases, in:
`• Sections 6.1-6.2 of EX2003
`• The remainder of EX2003
`• Dr. Tilseth’s meeting notes (EX2005 and EX2010)
`• K313 report (EX2013)
`• There is also no evidence, other than Dr. Tilseth’s suggestion,
`that the krill meal referenced in Example 1 was denatured.
`
`‘169 Petitioner’s Reply, Paper 15, pp. 9-13; ‘046 Petitioner’s Reply, Paper 15, pp. 9-13; see ‘169
`Tallon Reply Dec. at ¶¶ 13-14; ‘046 Tallon Reply Dec. at ¶¶ 14-15.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 34
`
`
`
`THERE IS NO CORROBORATION SUPPORTING DR. TILSETH’S
`REDUCTION TO PRACTICE STORY THAT A DENATURED KRILL
`PRODUCT WAS FORMED [CONTINUED]
`
`Dr. Tallon testified:
`
`•
`
`•
`
`“13. [14.] PO’s expert Tilseth relies solely on Sections 6.1 and 6.2 of EX2003
`(Tilseth Dec., EX2001 at ¶ 8) in order to support his only description of the
`production of a denatured krill meal aboard the Atlantic Navigator. However,
`notwithstanding PO’s expert to the contrary, neither Section 6.1 nor Section 6.2
`of EX2003 disclose or describe cooking or heating krill material denaturing
`lipases and phospholipases and/or describe or disclose a denatured krill
`product or meal. Neither does EX2003 provide any of the processing
`conditions used to prepare the meal. Again, even if EX2003 is taken as a whole, it
`does not disclose cooking or heating krill for denaturing lipases and phospholipases
`and/or describe or disclose a denatured krill product or meal.”
`
`“14. [15.] To be clear, none of exhibits accompanying Dr. Tilseth’s declaration,
`namely EX2002-EX2014, disclose ‘cooking’, a ‘cooking stage’, cooking
`temperature or duration, or the formation of a denatured krill product.”
`
`‘169 Tallon Reply Dec. at ¶¶ 13-14 (emphasis supplied), see also ¶¶ 29, 31; ‘046 Tallon Reply Dec. at ¶¶ 14-15
`(emphasis supplied), see also ¶¶ 29, 31.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 35
`
`
`
`THERE IS NO CORROBORATION SUPPORTING DR. TILSETH’S
`REDUCTION TO PRACTICE STORY THAT SECTIONS 6.1-6.2 DISCLOSE
`THE ALLEGED PROCESSES TO TREAT THE KRILL
`
`• Sections 6.1-6.2 (EX2003) do not disclose the
`operating conditions used to process the krill.
`
`• Sections 6.1-6.2 (EX2003) do not state that the krill
`was actually processed in a so-called “standard meal
`process,” or provide the operating conditions of such a
`process.
`
`• Sections 6.1-6.2 (EX2003) do not indicate that the krill
`fishing vessel was equipped with a “standard compact
`fish meal factory,” or explain what that phrase means.
`
`‘169 Petitioner’s Reply, Paper 15, pp. 9-10; ‘046 Petitioner’s Reply, Paper 15, pp. 9-10; see also ‘169 Tallon
`Reply Dec. at ¶¶ 29-30; ‘046 Tallon Reply Dec. at ¶ 28; see ‘169 Tilseth Dec., EX2001 at ¶ 8; ‘046 Tilseth Dec.,
`EX2001 at ¶ 8.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 36
`
`
`
`PATENT OWNER CANNOT INVOKE THE “RULE OF REASON”
`BY TAKING POSITIONS REGARDING DENATURATION THAT ARE
`CONTRARY TO THOSE MADE IN THE ‘169 AND ‘046 PATENTS
`
`The ‘169 and ‘046 patents state:
`“What is needed in the art are methods for processing krill that do not require transport of frozen
`•
`krill material over long distances and the products produced by those methods.” ‘169 Patent, EX1001,
`2:19-21; ‘046 Patent, EX1001, 2:17-19.
`
`•
`
`•
`
`•
`
`“The present invention provides methods to avoid decomposition of glycerides and phospholipids in krill
`oil and compositions produced by those methods. The product obtained by these new methods is virtually
`free of enzymatically decomposed oil constituents. The solution to the problem is to incorporate a
`protein denaturation step on fresh krill prior to use of any extraction technology. Denaturation can be
`achieved by thermal stress or by other means. After denaturation, the oil can be extracted by an optional
`selection of nonpolar and polar solvents including use of supercritical carbon dioxide.” ‘169 Patent,
`EX1001, 9:65-10:4 (emphasis supplied); ‘046 Patent, EX1001, 9:61-10:4 (emphasis supplied).
`
`“Krill oil extracted from denatured krill meal by supercritical fluid extraction even 19 months after
`production of meal contained virtually no decomposed phospholipids.” ‘169 Patent, EX1001, 11:3-6
`(emphasis supplied); ‘046 Patent, EX1001, 11:3-6 (emphasis supplied).
`
`“Fresh krill was pumped from the harvesting trawl directly into an indirect steam cooker, and heated to 90
`C. 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 80 C. After 19
`months storage in room temperature, a sample of the denatured meal was extracted in two steps with
`supercritical CO2 . . . .” ‘169 Patent, EX1001, 31:36-43 (emphasis supplied); ‘046 Patent, EX1001, 31:60-
`31:2 (emphasis supplied).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 37
`
`
`
`INVOCATION OF THE “RULE OF REASON” DOES NOT FILL THE GAPS
`IN DR. TILSETH’S REDUCTION TO PRACTICE STORY
`
`The totality of the evidence proffered by Patent Owner and relied on by Dr.
`Tilseth fails to disclose that krill was heated or cooked to a temperature
`sufficient to denature krill lipases and phospholipases:
`• Sections 6.1-6.2 of EX2003
`• The entirety of EX2003
`• The entirety of EX2013
`• Dr. Tilseth’s meeting notes (EX2005, EX2010)
`• Any of the exhibits accompanying Dr. Tilseth’s Declaration
`• There is no evidence supporting Dr. Tilseth’s statement that the krill
`meal referenced in Example 1 was denatured.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 38
`
`
`
`INVOCATION OF THE “RULE OF REASON” DOES NOT FILL THE GAPS
`IN DR. TILSETH’S REDUCTION TO PRACTICE STORY
`
`• “The ‘rule of reason’ analysis does not alter the
`requirement of corroboration of an inventor's
`testimony. Brown v. Barbacid, 276 F.3d 1327,
`1335 (Fed. Cir. 2002). Evidence of the inventive
`facts must not rest alone on the testimony of the
`inventor himself.” Chen v. Bouchard, 347 F.3d
`1299, 1308 (Fed. Cir. 2003).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 39
`
`
`
`INCONSISTENCIES REGARDING WHAT IS REPORTED IN
`EXHIBITS 2011 AND 2013
`
`EX2011, p. 0002
`
`EX2013, p. 0005
`
`“3150 kg krill flour”
`
`“3200 kg krill meal”
`
`“approximately 500 kg
`of phospholipids”
`
`“660 kg of crude
`lipids”
`
`starting
`material
`
`yield
`
`extract
`
`“not viscous”
`
`“high viscosity”
`
`conditions
`
`“lasted for (2) hours and
`was run at room
`temperature”
`
`“time and temperature
`. . . was unknown”
`
`‘169 Petitioner’s Reply, Paper 15, p. 15; ‘046 Petitioner’s Reply, Paper 15, p. 15.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 40
`
`
`
`STEMPEL DOES NOT OVERCOME THE ABSENCE OF
`ADEQUATE CORROBORATION OF DR. TILSETH’S
`REDUCTION TO PRACTICE STORY
`Stempel related to anticipation and simply held that a reference may be
`overcome as to a generic claim by showing priority to the species disclosed in
`the prior art reference. 241 F.2d 755, 758-59 CCPA 1957):
`
`In re Tanczyn put Stempel into proper context:
`
`•
`
`“We never intended by the language used in Stempel to authorize the
`overcoming of references by affidavits showing that the applicant had
`invented, prior to the reference date, a part, some parts or even a
`combination of parts, used to create an embodiment of his claimed
`invention. . . .”
`
`•
`
`* * *
`“The primary consideration is whether, in addition to showing what a
`reference shows, the affidavit also established possession of either the
`whole invention claimed or something falling within the claim, in the
`sense that the claim as a whole reads on it.”
`146 USPQ 298, 301-02 (CCPA 1965).
`‘169 Petitioner’s Reply, Paper 15, pp. 15-17; ‘046 Petitioner’s Reply, Paper 15, pp. 15-18.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 41
`
`
`
`THE CASES CITED BY PATENT OWNER FAIL TO DEMONSTRATE
`THAT STEMPEL OVERCOMES THE ABSENCE OF ADEQUATE
`CORROBORATION OF DR. TILSETH’S REDUCTION TO PRACTICE STORY
`
`Petitioner has not argued Breivik II recites a species of a claimed genus.
`Patent Owner’s cases are limited to genus - species situations
`
`•
`
`In re Rainer, 390 F.2d 771, 774 (CCPA 1968) (anticipation/genus-
`species)
`
`(“The question is whether the species which have been reduced
`to practice suffice to provide a basis for a reasonable inference
`of possession of the generic invention. We do not believe
`appellants have shown the reasonableness of the inference in this
`case. . . . Appellants have made no attempt to show that generic
`applicability would be a reasonable inference from their
`experiments of record.”).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 42
`
`
`
`•
`
`•
`
`THE CASES CITED BY PATENT OWNER FAIL TO DEMONSTRATE
`THAT STEMPEL OVERCOMES THE ABSENCE OF ADEQUATE
`CORROBORATION OF DR. TILSETH’S REDUCTION TO PRACTICE STORY
`[CONTINUED]
`In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974) (genus -
`species)
`(“We are satisfied that the differences in the embodiments
`called for by the claims are so small that the claimed
`invention would have been obvious.”).
`In re Stryker, 435 F.2d 1340, 1341 (CCPA 1971) (genus -
`species).
`(“the differences between the claimed invention and the
`reference disclosure are so small”).
`In re Clarke, 356 F.2d 987, 992 (CCPA 1966)
`(anticipation/genus-species).
`In re Wakefield, 422 F.2d 897, 901 (CCPA 1970)
`(anticipation/genus-species)
`In re Schaub, 537 F.2d 509, 512 (CCPA 1976)
`(anticipation/genus-species).
`
`•
`
`•
`
`•
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 43
`
`
`
`BREIVIK II NOT ESSENTIAL
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 44
`
`
`
`EVEN WITHOUT BREIVIK II THE GROUNDS ASSERTED ARE
`SUFFICIENT TO DEMONSTRATE OBVIOUSNESS
`
`Patent Owner erroneously maintains the claims of the ‘169 patent must be found
`patentable if Breivik II is antedated. ‘169 POR at 6.
`
`• Patent Owner ignores that one or more alternative references are provided for every
`limitation for which Breivik II is cited. See, e.g.,‘169 Petition, 69-89; ‘169 Reply,
`Paper 15, p.11; ‘169 Tallon Reply Dec., EX1086 at ¶¶ 24-25.
`
`Patent Owner erroneously maintains the claims of the ‘046 patent must be found
`patentable if Breivik II is antedated. ‘046 POR at 7.
`
`• Patent Owner ignores that one or more alternative references are provided for every
`limitation for which Breivik II is cited, except for chemical denaturation and the
`combination of chemical and heat denaturation.
`
`• Patent Owner, to support its reduction to practice argument could only argue that
`“[c]hemical treatment is a standard way to destroy the activity of enzymes” and that
`“[h]eat and chemical treatment is a standard way to destroy the activity of
`enzymes.” See, e.g., ‘046 Petition, 69-88; ‘046 POR at 29-30, 37; ‘046 Tallon Reply
`Dec., EX1086 at ¶¶ 25-26.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`RIMFROST EXHIBIT 1172 SLIDE 45
`
`
`
`PETITIONER’S REFERENC
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
