Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper No. 32
`Entered: February 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RIMFROST AS,
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`_______________
`
`IPR2020-01532 (Patent 9,644,169 B2)
`IPR2020-01533 (Patent 9,816,046 B2)
`_______________
`
`Record of Oral Hearing
`Held: January 12, 2022
`_______________
`
`
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 32
`Entered: February 4, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RIMFROST AS,
`Petitioner,
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`_______________
`
`IPR2020-01532 (Patent 9,644,169 B2)
`IPR2020-01533 (Patent 9,816,046 B2)
`_______________
`
`Record of Oral Hearing
`Held: January 12, 2022
`_______________
`
`
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01532 (Patent 9,644,169 B2)
`IPR2020-01533 (Patent 9,816,046 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JAMES HARRINGTON, ESQ.
`MICHAEL I. CHAKANSKY, ESQ.
`Hoffmann & Baron, LLP
`4 Century Dr.
`Parsippany, NJ 07054
`(973) 331-1700
`jharrington@hbiplaw.com
`mchakansky@hbiplaw.com
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN MITCHELL JONES, ESQ.
`DAVID A. CASIMIR, ESQ.
`Casimir Jones S.C.
`2275 Deming Way, Ste. 310
`Middleton, WI 53562
`(608) 662-1277
`jmjones@casimirjones.com
`dacasimir@casimirjones.com
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`
`January 12, 2022, commencing at 2:00 p.m. EST, via Videoconference.
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`IPR2020-01532 (Patent 9,644,169 B2)
`IPR2020-01533 (Patent 9,816,046 B2)
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`P R O C E E D I N G S
`- - - - -
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`2:00 p.m.
`JUDGE TORNQUIST: Okay, great. Okay. We are here on oral
`
`hearing for IPR 2020, 1532 and 1533 Rimfrost AS v. Aker, or Aker
`Biomarine Antarctic AS. Per our hearing order, each side will have 60
`minutes total to present their arguments for both cases. Petitioner, bearing
`the burden of proof, will start first and you can reserve time for rebuttal.
`
`Then we'll hear from patent owner, who can also reserve a short
`period of time for rebuttal or sur-rebuttal, if they so choose. Then we hear
`the rebuttal and sur-rebuttal arguments.
`
`We have the parties' exhibits. And as you all know, we're all
`appearing remotely here today, so please clearly announce what page and
`exhibit you're referring to as you work through either the demonstratives or
`the exhibits in this case.
`
`From time to time, since we're appearing remotely, we'll have people
`drop either audio or visual. If that should happen let us know immediately
`and we'll work with the hearing staff to connect everyone back up and then
`we'll just keep on moving from there.
`
`With that, Petitioner, when you're ready and please let us know how
`much time you'd like to reserve for rebuttal.
`
`MR. HARRINGTON: Yes, thank you. My name is James
`Harrington, lead counsel for Petitioner Rimfrost AS. I'm here with the first
`backup counsel, Michael Chakansky. We'd like to reserve 20 minutes for
`rebuttal.
`
`JUDGE TORNQUIST: Okay. When you're ready.
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`IPR2020-01533 (Patent 9,816,046 B2)
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`MR. HARRINGTON: Okay. Let me just share my screen here.
`Let's see where is it. Okay. May it please the board, again, my name's
`James Harrington, lead counsel for Petitioner Rimfrost AS. And we're here
`on another one of what we call the krill oil IPRs. Petitioner Rimfrost has
`successfully challenged five other patents, krill oil patents owned by the
`patent owner Aker, and we're here to discuss two more, US patent number
`9,644,169 and US patent number 9,816,046.
`
`Moving to Slide 2, we provide the various grounds, invalidity
`grounds for the '169 patents.
`
`And moving to Slide 3, we provide the various references and
`invalidity grounds relied on in the '046 patent. And these references, with
`the exception of one reference, Budzinski, have all been utilized in the
`previous five IPRs. So these would likely be familiar to the board.
`
`One reference I mentioned, Budzinski, is relied upon for the storage
`element which we feel would be obvious, but we wanted to include it the
`grounds just for good measure to expressly disclose the 13-month storage
`time.
`Moving on to Slide 4, using the Claim 1 from each of the patents, we
`
`show, sort of, the key elements here. And again, really with the exception
`of the storage period from 1 to 24 months in the '169 patent and 1 to 36
`months for the '046 patent, the patent owner is essentially conceding the
`obviousness of the other elements. So the obviousness analysis really
`wound up focusing on the storage period.
`
`And on Slide 5 we see the same is true for the other two independent
`claims, Claim 12 in the '169 patent and Claim 13 in the '046 patent. Again,
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`IPR2020-01533 (Patent 9,816,046 B2)
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`all of these elements have been analyzed in the previous IPRs with the
`exception of the storage period of 1 to 24 or 36 months.
`
`If we move to Slide 8, instead of really making a serious argument
`against obviousness, the patent owner is now essentially conceding
`obviousness in order to support its argument to try to antedate the Breivik II
`reference. And because there was various gaps in their corroboration story
`with regard to Dr. Tilseth's testimony, the examinist of the patent owner has,
`sort of, switched gears now and said well, you know, in order to, sort of, fill
`in those gaps everything is now obvious. And in part they rely on much of
`the testimony of Petitioner's expert, Dr. Tallon.
`
`If we move to Slide 9 we see that many of the elements of the claims
`are asserted to be obvious by the patent owner, again citing Dr. Tallon's
`testimony. We see that on the Slide 9. And there are additional elements
`that we highlight on Slide 10.
`
`Moving to Slide 11, collateral estoppel should apply in this case in
`view of the previous IPRs in which Rimfrost successfully validated the other
`Aker patents.
`
`If we move to Slide 12, we can see in the third row there the five
`continuation applications that were successfully invalidated, the '905 and the
`'877 patent. That -- those final written decisions were appealed and the
`final written decision's finding on patentability were affirmed in both cases.
`
`And then we also have final written decisions where -- which were
`not appealed in the '453 patent, the '752 patent and the '765 patent, again, the
`board finding that about -- all of the claims unpatentable in those IPRs.
`And so today we're arguing the '169 and the '046 patent, both of which are
`continuations from the '453 patent.
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`So moving on to Slide 13, the board previously relied on all of the
`references in finding the five other krill oil patents in the same family to be
`unpatentable, with the exception of the Budzinski reference that I mentioned
`earlier and its disclosure of krill meal for at least 13 months. However, the
`inclusion of this, its intuitive common-sense limitation of 1 to 24 or 1 to 36
`months does not materially alter the board's previous analysis.
`
`Again, you know, Dr. Tallon has noted that these krill are fish out of
`the waters right off of the -- of Antarctica, thousands of miles away from any
`land. And just really from a practical perspective, a storage period of at
`least one month does not alter the board's previous analysis at all.
`
`JUDGE TORNQUIST: Counsel, you -- this is Judge --
`
`MR. HARRINGTON: So collateral estoppel.
`
`JUDGE TORNQUIST: -- Tornquist. You you would agree,
`though --
`
`MR. HARRINGTON: Yes.
`
`JUDGE TORNQUIST: -- that this particular limitation of storage
`period was not addressed in the previous cases, right?
`
`MR. HARRINGTON: Yes, yes we do. We do acknowledge that.
`Yes.
`JUDGE TORNQUIST: Okay. And there's pages and pages of
`
`argument in this case about that specific storage limitation and a reference
`that wasn't in the other cases was Budzinski directly addressing it. I'm
`having a hard time seeing why collateral estoppel would apply here in that
`situation.
`
`MR. HARRINGTON: Much of what was discussed in the pre -- in
`the references previously considered by the board dealt with this notion of
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`IPR2020-01533 (Patent 9,816,046 B2)
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`denaturation and the stabilizing of the krill meal in order to facilitate storage
`and passage back to land where the krill oil could be extracted from the krill
`meal.
`And so as Dr. Tallon has explained in his declaration, really just from
`
`a practical consideration, you know, a storage period of at least one month in
`that context seems somewhat intuitive and wouldn't really alter, materially
`alter anyway, the board's previous analysis.
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: Okay? Moving to Slide 14 we see where
`the references were considered in the prior IPRs. We can see the Breivik II
`reference that the patent owner is trying to antedate has been used in two
`other IPRs against the '453 patent and the '765 patent. Breivik I was also
`used in the '877 patent and Breivik I is the same as Breivik II, but yet for the
`first time the patent owner is now trying to antedate the Breivik reference.
`
`JUDGE TORNQUIST: So, Counsel, this is Judge Tornquist, and
`I'm sure you're going to get to this, but what is the effect if they are able to
`antedate Breivik II for both these patents?
`
`MR. HARRINGTON: There's really only one claim for which
`Breivik II is exclusively relied upon and that's a dependent claim in the '046
`patent that requires that the denaturation occur by chemical means. And
`that really is the only element for which Breivik II is exclusively used.
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: So we wouldn't have much of this -- yeah.
`
`JUDGE TORNQUIST: So I'm just -- the reason -- I think you said
`that in your briefs but going back to your Slide 6.
`
`MR. HARRINGTON: Okay.
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`JUDGE TORNQUIST: There's a couple of spots here where you
`just have Breivik II listed and so the question for me is are there more spots
`than just that chemical denaturation where Breivik II is critical?
`
`MR. HARRINGTON: No --
`
`JUDGE TORNQUIST: And specifically here I'm looking at
`astaxanthin esters on your '046 patent chart.
`
`MR. HARRINGTON: Right.
`
`JUDGE TORNQUIST: And then on the next page you have a
`couple more where it's just Breivik II listed.
`
`MR. HARRINGTON: Yeah. I think if you look to the left on the
`'169 patent we also rely upon Randolph. I think we might have left
`Randolph off of the -- that might be an omission. In the '169 patent
`Randolph and Breivik II were listed for esters, astaxanthin esters.
`
`JUDGE TORNQUIST: So do you believe there might be an error
`in your chart here for the '046?
`
`MR. HARRINGTON: Yeah.
`
`JUDGE TORNQUIST: Are you asking us to go to the '169 to
`support the '046?
`
`MR. CHAKANSKY: We don't.
`
`MR. HARRINGTON: No.
`
`MR. CHAKANSKY: Randolph is used for 100 and 200 mils of
`astaxanthin, right underneath it.
`
`MR. HARRINGTON: Yeah. Right underneath that element you
`could see, again, on the' 046 patent, Randolph is utilized for 100 milligrams
`and 200 milligrams of astaxanthin esters. So it looks like that might just be
`an omission for astaxanthin esters right above.
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`JUDGE TORNQUIST: Okay. And we'll obviously double-check
`it.
`MR. HARRINGTON: Okay.
`
`JUDGE TORNQUIST: It's just something that popped out from
`
`your chart, but I just wanted to make sure I understood.
`
`MR. HARRINGTON: Yes. Yeah, sorry for that omission.
`
`JUDGE TORNQUIST: Okay. You can continue.
`
`MR. HARRINGTON: Okay. So again, to Slide 15, this slide we
`present to highlight the similarities between the elements that are pending in
`the '169 and '046 patents and what the board has already considered. Both
`the '877 patent -- excuse me -- and the '453 patent, like the '169 patent, relate
`to a method of production of krill oil.
`
`And we can see there all three patents include the element of treating
`to denature. It includes extracting the oil from the denatured krill product.
`Again, with the exception of the storage limitation, these limitations have
`already been considered by the board.
`
`Moving to Slide 16, we see that also includes the astaxanthin esters
`element. That was addressed in the '453 patent.
`
`And similarly, moving to Slide 17, it's the same for the '046 patent.
`Again, a method for the production of krill oil, treating to destroy the
`activity of the phospholipases and -- lipases and phospholipases.
`Essentially denaturing is there. Extracting the oil is there. Again, the
`only element not considered is what we think is the intuitive element of 1 to
`36 months.
`
`On Slide 18 we see the high phospholipid levels were previously
`considered again, as well as the astaxanthin ester element.
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`IPR2020-01533 (Patent 9,816,046 B2)
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`Moving to Slide 19, in affirming the board's final written decision,
`the Federal Circuit noted the board's findings were supported by substantial
`evidence, finding the lipid components of krill oil can be extracted using any
`number of suitable solvents and that the proportions of the components
`could be varied in predictable ways.
`
`Moving to Slide 20, we wanted to just highlight the fact that the
`patent owner cannot take positions inconsistent with these prior adverse
`judgments. And that comes from 37 CFR 42.73.
`
`Moving to Slide 21, we come to the issue of claim construction of the
`term krill meal. And Petitioner's proposed construction supported by Dr.
`Tallon is set forth there, "processed krill with reduced water content from
`which oil can be extracted."
`
`Moving to Slide 22, the patent owner improperly starts its analysis
`with a dictionary definition of meal which is focused on plant seeds, not krill
`or marine animals. And they rely upon this definition from the Cambridge
`English Dictionary, presumably because it includes the word powder, which
`is part of their claim construction.
`
`Moving to Slide 23, we see that their proposed, the patent owner's
`proposed construction is a krill powder resulting from the processing of krill.
`
`Moving to Slide 25, we can see that the Petitioner's proposed
`construction does, in fact, rely on the intrinsic evidence, as it should. We
`see some of the language here taken directly from the patents. And just -- I
`just note that the specification for both the '169 and '046 are the same.
`
`JUDGE TORNQUIST: Counsel, this is --
`
`MR. HARRINGTON: And we see --
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`JUDGE TORNQUIST: -- this is Judge Tornquist again. Where
`exactly or why do we need to construe krill meal in this case? What is it
`specifically in the arguments that requires us to distinguish between these
`two central constructions?
`
`MR. HARRINGTON: That came up, I believe, through the patent
`owner's response. I think that, I'm guessing, but my guess is that they feel
`that if they can artificially narrow the definition to a powder, which is not
`supported by the specification, that that may help them avoid obviousness,
`although krill powder was known. Freeze-dried powders were known.
`
`JUDGE TORNQUIST: I guess my question was, for example --
`
`MR. HARRINGTON: Again --
`
`JUDGE TORNQUIST: -- but for example Budzinski. Would this
`--
`MR. HARRINGTON: Right.
`
`JUDGE TORNQUIST: -- construction change whether Budzinski
`
`has a krill meal or not?
`
`MR. HARRINGTON: No. No.
`
`JUDGE TORNQUIST: And, for example --
`
`MR. HARRINGTON: Budzinski merely just --
`
`JUDGE TORNQUIST: Go ahead.
`
`MR. HARRINGTON: No. The Budzinski discloses heat treating
`the krill to form a meal. They disclose the stabilization and the storage.
`They disclose the extraction using organic solvents, but there's really no
`mention of whether it needs to be a powder or something else.
`
`JUDGE TORNQUIST: Okay. And with, and with the Fricke
`reference you're not arguing that Fricke actually has a krill meal, correct?
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`MR. HARRINGTON: Well, I mean there, there is processed krill
`there. They did process the krill. They heated the krill to denature those
`lipases and did ultimately extract the oil from that denatured meal after a
`certain some months of storage. So yeah, I think that that could be
`considered a krill meal.
`
`JUDGE TORNQUIST: So is this where the rubber hits the road for
`this construction? Where you're saying just by heating that krill and
`putting it into the five-kilogram blocks that's a meal under your
`construction?
`
`MR. HARRINGTON: No. Actually under our construction you
`don't even have to heat it. All you need to do -- very often what happens is
`the krill is fished out of the ocean. It's mixed with seawater. And what
`they do, as we indicate here on Slide 25, they wet press it to form a meal.
`They essentially just squeeze the majority of the seawater out of the krill so
`they have a krill meal.
`
`You know, in one embodiment they call it a press cake and, you
`know, here again, on Column 41 of the patent they describe, they being the
`patent owner, "fresh krill being pumped from a harvesting trawl directly into
`an indirect steam cooker and heated in 90 degrees C. Water and a small
`amount of oil were removed in a screw press. Antioxidant was added and
`then the denatured meal, i.e., that, sort of, dried material was further dried
`under vacuum."
`
`JUDGE TORNQUIST: Okay. I mean, I understand what your
`argument is here but I don't see where Fricke shows where those type of
`actions happen. So when you get to Fricke maybe point that out.
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`The last point is Catchpole has a freeze-dried krill powder. Is that
`correct?
`
`MR. HARRINGTON: Yes.
`
`JUDGE TORNQUIST: Would that satisfy patent owner's definition
`of krill meal?
`
`MR. HARRINGTON: Yes. Yeah, because the water --
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: -- would have been, you know, a good
`portion of the water would be removed.
`
`JUDGE TORNQUIST: Well, that would be yours, but patent
`owner's is even broader, right, a krill powder resulting from the processing
`of krill?
`
`MR. HARRINGTON: Oh, yes. Yes. Yeah, that would be -- that
`would satisfy their definition as well.
`
`JUDGE TORNQUIST: Okay. So really what I'm trying to figure
`out is where does this really matter? And if you believe it matters in Fricke
`and that Fricke actually satisfies only your definition and not theirs, please
`when you get to it just point it out or any other references where you think it
`matters.
`
`MR. HARRINGTON: Okay. Yeah. Again, we really only made
`reference to it because the patent owner, sort of, came up with a definition
`that we feel really doesn't make a whole lot of sense.
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: And it's not supported by the --
`
`JUDGE TORNQUIST: And obviously from our perspective --
`
`MR. HARRINGTON: Yeah.
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`JUDGE TORNQUIST: From our perspective we only want to
`construe what we need to construe to resolve the case and so I want to make
`sure I understand that completely.
`
`MR. HARRINGTON: Right.
`
`JUDGE TORNQUIST: So, okay, you can move on.
`
`MR. HARRINGTON: Yeah. That was the reason.
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: That was the reason we put that in there --
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: -- in response to patent owner's proposed
`definition. So we felt the need to propose an alternative that actually made
`sense in light of the specification. Because if we move to --
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: -- if we move to Slide 26, Dr. Tallon
`confirms that krill meal is formed by a screw press or a wet press described
`in the patent and the resulting products, including press cake, are not
`powdered materials, nor does the mere reduction of particle size equate to
`the formation of krill powder.
`
`And moving to Slide 27, Dr. Tallon also notes, I think importantly,
`that the proposed construction of the patent -- from the from the patent
`owner that krill meal, the krill meal would by definition include a
`completely delipidated meal which, from which no krill oil could be
`extracted. And, you know, which in turn is a material requirement of all of
`the claims. So again, that was another reason we felt like we needed to
`respond to the patent owner's proposed construction.
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`IPR2020-01532 (Patent 9,644,169 B2)
`IPR2020-01533 (Patent 9,816,046 B2)
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`Okay. Moving on to Slide 28, there was no actual reduction to
`practice by the patent owner.
`
`On Slide 29 we see that the effective filing date of the Breivik II
`reference is November 16, 2006. And the patent owner is alleging an
`actual reduction to practice prior to that date.
`
`Moving to Slide 30, it is patent owner's burden --
`
`JUDGE TORNQUIST: Counsel? Sorry. Sorry to cut you off.
`This is Judge Tornquist again. I just wanted to do a clarifying piece here.
`In your petition at Page 11, you mention that you don't believe that the
`claims are entitled to a date, I believe, earlier than January 20th, 2008, due to
`certain limitations being missing. Do we need to resolve that question for
`this case at this point?
`
`MR. HARRINGTON: That only applies, I believe, to the '046
`patent which includes the ether phospholipid limitation. It would not, since
`the '169 patent does not include that limitation, then the fact that the ether
`limit, the ether phospholipid element showing up at the first, for the first
`time in that later filed provisional doesn't appear.
`
`JUDGE TORNQUIST: Okay. But either way it doesn't matter
`here. Either they predate -- either they antedate Breivik II or they don't, but
`this particular date doesn't seem to matter. And that's why I was trying to
`understand whether we have to resolve that question.
`
`MR. HARRINGTON: No, I don't believe so.
`
`JUDGE TORNQUIST: Okay. Thank you.
`
`MR. HARRINGTON: Okay. So it's the patent owner's burden of
`establishing that its claimed invention is entitled to the earlier priority date,
`and to satisfy this burden the patent owner must demonstrate performance of
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`IPR2020-01532 (Patent 9,644,169 B2)
`IPR2020-01533 (Patent 9,816,046 B2)
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`a process meeting all of the claimed limitations and show the invention
`worked for its intended purpose.
`
`Moving to Slide 31, the case law indicates that the Applicant is
`required to demonstrate that the Applicant was in possession of the later
`claimed invention before the effective date of the reference.
`
`On Slide 32, patent owner's argument rests on the testimony of Dr.
`Tilseth, who is an inventor of both the '169 and the '046 patent. The patent
`owner has failed to provide evidence corroborating that the krill had been
`cooked, and if cooked, heated to a temperature sufficient to denature the
`lipases and phospholipases, which is testified to by Dr. Tilseth, occurs at the
`cooking stage.
`
`And this absence of independent corroboration, corroboration is fatal
`to the patent owner's attempt to antedate the Breivik II reference.
`
`JUDGE TORNQUIST: Okay. Counsel, this is Judge Tornquist
`again.
`MR. HARRINGTON: Moving to slide --
`
`JUDGE TORNQUIST: One question that came up to me in my
`
`mind when reading this was how could it not be denatured if they stored it
`for this long and then extracted it? It seems like the materials would all
`have degraded due to the enzymes if they hadn't denatured this product.
`And doesn't that sort of implication, sort of, support what Dr. Tilseth is
`saying?
`
`MR. HARRINGTON: No. I think, I think Budzinski refers to
`storage from various means. Let me just grab Budzinski real quick. You
`know, the freeze-dried material can be stored. You know, the freeze-dried
`material can be stored.
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`IPR2020-01533 (Patent 9,816,046 B2)
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`The other thing, too, to note is that the specification requires or
`discloses more than one way of denaturing. You know, Dr. Tilseth here is
`focused on heating, but the specification also discloses denaturing through
`chemical means. So there are multiple ways of denaturing and that --
`
`JUDGE TORNQUIST: But why does that matter for the --
`
`MR. HARRINGTON: -- is not disclosed in any --
`
`JUDGE TORNQUIST: Why does that matter for the majority of
`your claims, which don't say why or how it's denatured. I think you have
`one claim that talks about chemical but --
`
`MR. HARRINGTON: Well, I think it --
`
`JUDGE TORNQUIST: Go ahead.
`
`MR. HARRINGTON: Yeah. I think it matters in that Dr. Tilseth
`is specifically testifying that this material had been cooked and that was the
`way that it was denatured. And so there's no, there's no mention, not only
`is there no mention of cooking, there's no mention of denaturation. There's
`no mention of inactivating the lipases and phospholipases. There's no
`mention of chemical treating. There's no mention of freeze drying. It's
`completely devoid of that element.
`
`JUDGE TORNQUIST: Okay.
`
`MR. HARRINGTON: Yeah, and the patent owner in their papers
`asked a similar question. Well, why are you focused on 6.1 and 6.2 at
`example 2003? The answer is we see here on Slide 33 is Dr. Tilseth was
`the one that expressly testified that Section 6.1 and 6.2 of Exhibit 2003
`describe production and sampling of the krill meal. And then he goes on to
`say, "heating of the krill meal sufficient to denature lipases and
`phospholipases occurs at the cooking stage prior to decanting and pressing."
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`IPR2020-01533 (Patent 9,816,046 B2)
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`But if we go to Slide 34, contrary to the patent owner's assertions,
`there's no reference at all to a cooking step, heating, temperature sufficient to
`denature lipases or phospholipases in Section 6.1 or 6.2 or the remainder of
`Exhibit 2003 or any of the other exhibits that the patent owner has submitted
`in order to support corroboration for Dr. Tilseth's testimony.
`
`And if we go to Slide 35, Dr. Tallon has testified that not, you know,
`sort of, supporting this notion, he says, "notwithstanding the patent owner's
`expert testimony of the contrary, neither 6.1 nor 6.2 of Exhibit 2003 disclose
`or describe cooking or heating krill material, denaturing lipases and
`phospholipases and/or describe or disclose a denatured krill meal or
`product." Neither does Exhibit 2003 provide any of the processing
`conditions used to prepare the meal, which I think gets to your earlier
`question.
`
`So none of the exhibits accompanying Dr. Tilseth's declaration
`disclose cooking, cooking stage, temperature or formation of the denatured
`product.
`
`Moving to Slide 37, the 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.
`
`And what we're getting at here is, again, in order -- we, sort of,
`mentioned this earlier in the presentation -- but in order to, sort of, fill in the
`gaps of its corroboration story, the patent owner at this point is saying, well,
`yeah, even though denaturation or, you know, inactivation of the lipases or
`cooking or anything else, even though none of that is in the corroborating
`documents, it doesn't matter because all of that was obvious and well-known
`and a standard way of doing it.
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`IPR2020-01533 (Patent 9,816,046 B2)
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`But here in the patents we see that they tell the exact opposite story.
`In the '169 and '046 patents they state, "what is needed in the art are
`methods," again, we're reading off of Slide 37, "what is needed in the art are
`methods for processing krill that do not require transport of frozen krill
`material over long distances." And they say, "the solution to this problem
`is to incorporate a protein denaturation step." And then what they go on to
`describe is the extraction of oil from that denatured meal.
`
`So here in the patent, contrary to what they're arguing now in their
`antedating argument, the denaturation was a key element to the invention.
`And so we're just pointing out they really, you know, should not be able to,
`kind of, have it both ways.
`
`Okay. Moving on to -- in the interest of time I'll move to Slide 41.
`Here the patent owner relies heavily on the Stempel case to say that the
`missing element of denaturation would be obvious, you know, again, despite
`what, you know, what's disclosed as being a key element of the invention.
`However, 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.
`
`And the In re Tanczyn case puts Stempel into its proper context
`where they say, "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 or some parts or
`even a combination of parts used to create an embodiment of the claimed
`invention." So the whole invention needs to needs to be, needs to be
`shown.
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`IPR2020-01533 (Patent 9,816,046 B2)
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`
`And on Slide 42, the case law, you know, further supports this notion
`in the In re Rainer case. The question, they say the question is "whether
`the species which have been reduced to practice suffice to provide a basis for
`reasonable inference of possession of the generic invention." And again
`here, you know, we believe that with a key element that's missing, the actual
`reduction to practice and corroboration has not been satisfied.
`
`Moving to Slide 43, we see that unlike the cases, many of the cases
`cited by the patent owner, again, we have a key element that's missing here.
`So it's not like the case is relied upon in the patent owner's briefs where it
`was an anticipation.
`
`The one reference relied upon was an anticipation and you, sort of,
`had a genus species situation where there might have been very minor or
`insignificant differences between the corroborating evidence and the art that
`was to be antedated. Here we're missing a key element.
`
`And before I go further, I just wanted to also switch to the patent
`itself. I'm going use the '169 patent. And if we go to Page 34, the patent
`owner made an argument for the first time in it's sur-reply, that because
`much of the data in example one of the patent is also located in Exhibit
`2003, that this also somehow shows corroboration.
`
`But again, if we look at example one here, there again is no mention
`at all of denaturation, heating, inactivating the lipases or phospholipases or
`any
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