Trials@uspto.gov
`571-272-7822
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`Paper 33
`Date: April 6, 2022
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`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
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 33
`Date: April 6, 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
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01532
`Patent 9,644,169 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Rimfrost AS (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–20 of U.S. Patent No. 9,644,169 B2
`(Ex. 1001, “the ’169 patent”). Aker Biomarine Antarctic AS (“Patent
`Owner”) did not file a Preliminary Response to the Petition. Upon review of
`Petitioner’s arguments and evidence, we instituted an inter partes review of
`all claims and grounds asserted in the Petition (Paper 6, “Institution
`Decision” or “Inst. Dec.”).
`
`Patent Owner subsequently filed a Response (Paper 9, “PO Resp.”), to
`which Petitioner filed a Reply (Paper 15, “Pet. Reply”), and Patent Owner
`filed a Sur-Reply (Paper 18, “Sur-Reply”). With authorization, Patent
`Owner also filed a paper identifying arguments and evidence in Petitioner’s
`Reply that it considers to be improper (Paper 19), to which Petitioner filed a
`response (Paper 21).
`
`Petitioner also filed a motion to exclude certain evidence relied upon
`by Patent Owner (Paper 25), to which Patent Owner filed an opposition
`(Paper 26), and Petitioner filed a reply (Paper 28).
`In support of their respective positions, Petitioner relies upon the
`declaration and reply declaration of Dr. Stephen J. Tallon (Exs. 1006, 1086),
`and Patent Owner relies upon the declaration of Dr. Jacek Jaczynski
`(Ex. 2015).
`
`An oral hearing was held on January 12, 2022, and a transcript of the
`hearing is included in the record (Paper 32, “Tr.”).
`
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`B. Real Parties-in-Interest
`Petitioner identifies itself, Olympic Holding AS, Emerald
`Fisheries AS, Rimfrost USA, LLC, Rimfrost New Zealand Limited, and
`Bioriginal Food and Science Corp. as real parties-in-interest. Pet. 3. Based
`on various ownership interests, and out of “an abundance of caution,”
`Petitioner also identifies Stig Remøy, SRR Invest AS, Rimfrost Holdings
`AS, and Omega Protein Corporation as real parties-in-interest. Id.
`Patent Owner identifies itself as the real party-in-interest in this
`proceeding. Paper 5, 1.
`
`C. Related Matters
`The parties identify as a related matter Aker Biomarine Antarctic AS v.
`Olympic Holding AS, 1:16-CV-00035-LPS-CJB (D. Del.), which involved
`U.S. Patent Nos. 9,028,877 B2 (“the ’877 patent”) and 9,078,905 B2 (“the
`’905 patent”). Pet. 3–4; Paper 5, 1. The parties further identify
`Investigation No. 337-TA-1019 by the United States International Trade
`Commission, which involved the ’877 and ’905 patents, as well as U.S.
`Patent No. 9,320,765 (“the ’765 patent”), U.S. Patent No. 9,375,453 (“the
`’453 patent”), and U.S. Patent No. 9,072,752 (“the ’752 patent”). Pet. 4;
`Paper 5, 1–2.
`The parties also identify the following Board proceedings as related
`matters:
` IPR2017-00745 and IPR2017-00747, which requested review
`of the ’905 patent (all challenged claims found unpatentable
`(Ex. 1103), decision affirmed on appeal (Ex. 1154));
` IPR2017-00746 and IPR2017-00748, which requested review
`of the ’877 patent (all challenged claims found unpatentable
`(Ex. 1104), decision affirmed on appeal (Ex. 1154));
`
`3
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`Patent 9,644,169 B2
` IPR2018-00295, which requested review of the ’765 patent (all
`challenged claims found unpatentable (Ex. 1129));
` PGR2018-00033, which requested review of U.S. Patent
`No. 9,644,170 (institution denied because the challenged patent
`was not eligible for post grant review);
` IPR2018-01178 and IPR2018-01179, which requested review
`of the ’453 patent (all challenged claims found unpatentable
`(Exs. 1157, 1158));
` IPR2018-01730, which requested review of the ’752 patent (all
`challenged claims found unpatentable (Ex. 1159)); and
` IPR2020-01533, which requested review of U.S. Patent No.
`9,816,046 B2 (pending).
`Pet. 4–7; Paper 5, 2–4.
`
`D. The ’169 Patent
`The ’169 patent discloses extracts from Antarctic krill that include
`bioactive fatty acids. Ex. 1001, 1:22–23. The ’169 patent explains that krill
`oil compositions, including compositions having up to 60% w/w
`phospholipid content and as much as 35% w/w EPA/DHA1 content, were
`known in the art. Id. at 1:57–60. The ’169 patent further explains that
`“[k]rill oil compositions have been described as being effective for
`decreasing cholesterol, inhibiting platelet adhesion, inhibiting artery plaque
`formation, preventing hypertension, controlling arthritis symptoms,
`preventing skin cancer, enhancing transdermal transport, reducing the
`
`
`1 According to the ’169 patent, “EPA” is 5,8,11,14,17-eicosapentaenoic acid
`and “DHA” is 4,7,10,13,16,19-docosahexanoic acid. Ex. 1001, 9:12–16.
`
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`Patent 9,644,169 B2
`symptoms of premenstrual symptoms or controlling blood glucose levels in
`a patient.” Id. at 1:49–55.
`
`According to the ’169 patent, frozen krill are typically transported
`from the Southern Ocean to a processing site, but lipases and phospholipases
`within the krill can result in the decomposition of glycerides and
`phospholipids during transport. Id. at 2:6–16, 9:61–10:8. To avoid the
`problem of enzymatic decomposition of krill products, the ’169 patent
`describes a method of thermally denaturing the lipases and phospholipases
`in fresh-caught krill prior to storage and processing. Id. at 10:5–10, 10:45–
`50. The ’169 patent reports that these denaturing steps allow for the storage
`of krill material “for from about 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, or 12 months to
`about 24 to 36 months prior to processing.” Id. at 10:36–44.
`After denaturation, the krill can be subject to extraction processes
`either on board the ship or at a remote location. Id. at 10:38–40. In one
`embodiment, krill oil is extracted from krill meal in two stages. Id. at 9:54–
`55. In the first stage, a neutral fraction is extracted using either neat
`supercritical CO2 or CO2 in combination with 5% ethanol. Id. at 9:55–57. In
`the second stage, polar lipids (phospholipids) are extracted by adding at least
`20% ethanol to the supercritical CO2 extraction medium. Id. at 9:58–60.
`The ’169 patent reports that “[k]rill oil extracted from denatured krill meal
`by supercritical fluid extraction even 19 months after the production of the
`meal contained virtually no decomposed phospholipids.” Id. at 11:3–6. The
`’169 patent further reports that the novel krill oil compositions of the
`invention are “characterized by containing high levels of astaxanthin,
`phospholipids, includ[ing] enriched quantities of ether phospholipids, and
`omega-3 fatty acids.” Id. at 9:46–49.
`
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`Patent 9,644,169 B2
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`E. Illustrative Claims
`Petitioner challenges claims 1–20 of the ’169 patent. Claims 1 and 12
`are independent, with claims 2–11 depending, directly or indirectly from
`claim 1, and claims 13–20 depending, directly or indirectly, from claim 12.
`Claims 1 and 4 are illustrative of the challenged claims and are reproduced
`below:
`1. A method of production of krill oil comprising:
`a) providing krill;
`b) treating said krill to denature lipases and phospholipases in said
`krill to provide a denatured krill product;
`c) storing said denatured krill product for a storage period of from 1 to
`24 months;
`d) after said storage period, extracting oil from said denatured krill
`product with a polar solvent to provide a krill oil with from about 3%
`to about 15% ether phospholipids w/w of said krill oil [and]
`astaxanthin esters in amount of greater than about 100 mg/kg of said
`krill oil.
`
`Ex. 1001, 35:45–55.
`4. The method of claim 1, wherein said denatured krill product is a
`krill meal.
`Id. at 36:12–13.
`
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`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–20 would have been unpatentable on
`the following grounds:
`
`Claims Challenged
`
`1–5, 7–15, 17–20
`
`6, 16
`
`
`
`35
`References/Basis
`U.S.C. §
`103(a)2 Breivik II,3 Catchpole,4 Budziński,5
`Fricke,6 Randolph7
`103(a) Breivik II, Catchpole, Budziński,
`Fricke, Randolph, Sampalis I8
`
`II. ANALYSIS
`A. Legal Standards
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter as a whole would have been obvious at the time the
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the claims of
`the ’169 patent have an effective filing date before the March 16, 2013,
`effective date of the applicable AIA amendments, we refer to the pre-AIA
`versions of 35 U.S.C. §§ 102 and 103.
`3 WO 2008/060163 A1, published May 22, 2008 (Ex. 1037) (“Breivik II”).
`Breivik II claims priority to U.S. Provisional Application No. 60/859,289,
`filed November 16, 2006. Ex. 1037, code (30).
`4 WO 2007/123424 A1, published Nov. 1, 2007 (Ex. 1009) (“Catchpole”).
`5 Budziński et al., Possibilities of processing and marketing of products
`made from Antarctic krill, FAO Fish. Tech. Pap. (268):46 (1985) (Ex. 1008).
`6 Fricke et al., Lipid, Sterol and Fatty Acid Composition of Antarctic Krill
`(Euphausia superba Dana), 19(11) LIPIDS 821–827 (1984) (Ex. 1010)
`(“Budziński”).
`7 US 2005/0058728 A1, published Mar. 17, 2005 (Ex. 1011) (“Randolph”).
`8 Sampalis et al., Evaluation of the Effects of Neptune Krill Oil™ on the
`Management of Premenstrual Syndrome and Dysmenorrhea, 8(2) ALT.
`MED. REV. 171–179 (2003) (Ex. 1012) (“Sampalis I”).
`
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`Patent 9,644,169 B2
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) if in the record, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`B. Level of Ordinary Skill in the Art
`Petitioner provides the following definition of the ordinarily skilled
`artisan
`A [person of ordinary skill in the art] 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 [person of ordinary skill in the art] would have had
`at least five years applied experience.
`Pet. 9–10 (citing Ex. 1006 ¶¶ 35–36).
`Neither Patent Owner nor Dr. Jaczynski dispute Petitioner’s definition
`of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For purposes of this
`proceeding, I will accept [Petitioner’s] definition of a [person of ordinary
`skill in the art].”).
`Upon review of the ’169 patent and the prior art of record, we find
`Petitioner’s uncontested definition reasonable and supported by the evidence
`of record. Accordingly, we adopt this definition of one of ordinary skill in
`the art for purposes of this Decision.
`
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`Patent 9,644,169 B2
`
`C. Claim Construction
`Petitioner provides proposed claim constructions for the terms “krill
`oil,” “denature lipases and phospholipases,” “polar solvent,” “astaxanthin
`esters,” “krill meal,” and “freshly harvested.” Pet. 32–39. With respect to
`“krill meal,” Petitioner contends this term should be construed to mean
`“processed krill with reduced water content from which krill oil can be
`extracted.” Id. at 38.
`
`Patent Owner provides proposed constructions for the terms “krill
`meal” and “denature lipases and phospholipases.” PO Resp. 7–12. With
`respect to “krill meal,” Patent Owner contends Petitioner’s proposed
`construction of “krill meal” is overbroad and ignores the ordinary and
`customary meaning of a meal, which is a “powder formed by particle size
`reduction of a starting material.” Id. at 8 (citing Ex. 2015 ¶¶ 14–16). Thus,
`Patent Owner construes “krill meal” to mean “a krill powder resulting from
`the processing of krill.” Id.
`Upon review of the parties’ arguments and supporting evidence, we
`determine that no terms of the ’169 patent require construction in order to
`resolve the disputes in this proceeding. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”)).
`D. Collateral Estoppel
`Petitioner contends that in three prior IPRs the Board analyzed similar
`subject matter to that claimed in the ’169 patent and found the claims
`unpatentable based on the same prior art asserted in this proceeding.
`Pet. 40–41. “Given the materially identical claim limitations and common
`
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`Patent 9,644,169 B2
`references,” Petitioner contends “the Board’s factual findings and
`conclusions of law regarding, inter alia, the teachings of the prior art, the
`motivation to combine those teachings, and claim construction in the prior
`Final Written Decisions should be given preclusive effect.” Id. at 41–42.
`Petitioner concedes that the precise issue of whether one of ordinary
`skill in the art would have understood that a denatured krill product could
`be stored for 1 to 24 months before extraction was not at issue in the prior
`IPRs, but contends collateral estoppel still applies because the “inclusion of
`an intuitive and common sense storage limitation does not materially alter
`the question of the ’169 patent’s unpatentability.” Id. at 41; Pet. Reply 7.
`“Collateral estoppel protects a party from having to litigate issues that
`have been fully and fairly tried in a previous action and adversely resolved
`against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735
`F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral
`estoppel applies “[i]f the differences between the unadjudicated patent
`claims and adjudicated patent claims do not materially alter the question of
`invalidity.” Id.
`Petitioner points to no prior decision of the Board where the issue of
`whether it would have been obvious to denature a krill product and then
`store it for 1 to 24 months before extraction was at issue. Moreover, to
`demonstrate that the added limitation would have been obvious, Petitioner
`relies heavily on the disclosures of Budziński, which was not at issue or
`analyzed in the prior proceedings. Pet. 45; PO Resp. 13 (asserting that the
`prior art in the previous proceedings “did not include Budziński”).
`Accordingly, Petitioner has not demonstrated that collateral estoppel applies
`in this proceeding.
`
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`E. Reliance on Breivik II
`Patent Owner contends the invention recited in the claims of the ’169
`patent was conceived and reduced to practice prior to the earliest possible
`priority date of Breivik II. PO Resp. 17. And, because each ground asserted
`in the Petition relies on Breivik II, Patent Owner contends the Petition must
`be denied. Id. at 36.
`Petitioner asserts that Patent Owner has failed to antedate Breivik II
`and, even if Breivik II is antedated, Petitioner has shown that the challenged
`claims are unpatentable without that reference, as “one or more alternative
`references are provided for every limitation for which Breivik II is cited.”
`Pet. Reply 7.
`We begin by considering whether Petitioner’s challenges based on
`Breivik II, Catchpole, Budziński, Fricke, and Randolph necessarily depend
`upon the teachings and disclosures of Breivik II. Based upon our review of
`the Petition, we find that they do not because Petitioner consistently relies on
`multiple prior art references to establish that a particular limitation is
`disclosed in the prior art, and at no point does it rely solely on Breivik II as
`describing any particular limitation. Pet. 44–49. For example, in addressing
`whether it was known to treat krill to provide a denatured product, Petitioner
`asserts that “[t]reating krill to provide a denatured krill product was well
`known, disclosed and taught in Breivik II, Budziński, and Fricke.” Id. at 44.
`Based upon our review of the Petition, we also find that there is not
`any particular reason to combine the prior art references set forth by
`Petitioner that relies solely on Breivik II. See id. at 59–66. For example, in
`asserting that one of ordinary skill in the art would have understood that krill
`oil could be extracted using methods known in the art, Petitioner relies on
`
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`Patent 9,644,169 B2
`the independent disclosures of Brevik II, Catchpole, Budziński, and Fricke.
`Id. at 62–63.
`Given the structure of the Petition and its reliance on multiple,
`independent references to establish obviousness, we find that the Petition
`does not necessarily fail if Breivik II is removed from consideration.
`Moreover, because (for the reasons set forth below) we determine that
`Petitioner has shown by a preponderance of the evidence that the challenged
`claims would have been obvious over Catchpole, Budziński, Fricke, and
`Randolph, without the teachings of Breivik II, we do not rely on Breivik II
`for our analysis. Thus, the issue of whether Patent Owner’s evidence of
`conception and reduction to practice is sufficient to antedate Breivik II is
`moot, and we do not resolve the issue in our Decision.
`F. Claims 1–5, 7–15, and 17–20 over Catchpole, Budziński, Fricke, and
`Randolph
`Petitioner contends that the subject matter of claims 1–5, 7–15, and
`17–20 would have been obvious over the combined disclosures of
`Catchpole, Budziński, Fricke, and Randolph. Pet. 42–66.
`1. Catchpole
`Catchpole discloses “a process for separating lipid materials
`containing phospholipids.” Ex. 1009, 1:5–6, 3:27–28. Catchpole explains
`that phospholipids “have been implicated in conferring a number of health
`benefits including brain health, skin health, eczema treatment, anti-infection,
`wound healing, gut microbiota modifications, anticancer activity, alleviation
`of arthritis, improvement of cardiovascular health, and treatment of
`metabolic syndromes.” Id. at 1:29–2:2. Catchpole further explains that
`products having high levels of particular phospholipids “may be employed
`
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`in a number of applications, including infant formulas, brain health, sports
`nutrition and dermatological compositions.” Id. at 25:9–13.
`In Example 18, Catchpole describes the fractionation of krill lipids
`from freeze-dried krill powder using a process that employs supercritical
`CO2 in a first extraction and then CO2 and ethanol in a second extraction. Id.
`at 24:1– 16. Table 16 of Catchpole is reproduced below.
`
`
`
`Table 16 reports the phospholipid concentrations present in the krill oil
`extract obtained in Example 18. Id. at Table 16. As shown in Table 16,
`Extract 2 has a total phospholipid concentration of 45.1%, and includes
`39.8% phosphatidylcholine (“PC”), 4.6% alkylacylphosphatidylcholine
`(“AAPC”), and 0.2% alkylacylphosphatidylethanolamine (“AAPE”). Id.;
`see also id. at 1:11–15 (defining PC, PI, PS, PE, and CL).
`2. Budziński
`Budziński, published in 1985, “presents the current state of possible
`commercial-scale uses of krill-processing technologies,” including
`processing technologies for products for “human consumption, animal feed,
`and industrial purposes.” Ex. 1008, Abstr. Budziński explains that the
`“main difficulty in krill processing” is caused by proteolytic enzymes, such
`as lipases. Id. at 6.9 According to Budziński, lipases “cause the
`
`
`9 Unless otherwise noted, citations to prior art references are to the original
`page numbers of the documents, not to the page numbers added by Petitioner
`in the lower right corner of the documents.
`
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`decomposition of phospholipids and, to a lesser degree, triglycerides,” and
`result in an increase in free fatty acids in krill oil. Id. at 6–7. To avoid
`enzyme degradation of krill products, Budziński explains that storage time
`for raw krill products “should be as short as possible” and that vessels “must
`be properly equipped for processing” krill as soon as possible after capture.
`Id. at 9, 20 (“Efforts should be made to regulate catches so that the time
`before processing is as short as possible.”), 25 (“Due to its technological
`properties, the raw materials should be processed as soon as possible after
`capture. The only way to meet this requirement is to install processing
`facilities on-board the vessel.”). Budziński discloses that the optimum
`temperature for heating krill is believed to be 80–85 ℃ and that properly
`processed krill meal is “stable for 13 months of storage without addition of
`antioxidants.” Id. at 20–22.
`
`3. Fricke
`Fricke reports the total lipid content and composition for krill samples
`caught in the Antarctic Ocean in December 1977 and March 1981.
`Ex. 1010, Abstr., 822. Fricke reports that “[k]rill samples of 5 kg were
`quick-frozen and stored at -35 C until analyzed” and that “lipid extraction
`was performed according to Folch et al.” Id. at 821. The samples analyzed
`in Fricke contained approximately 33.3% +/- 0.5% w/w (1977 sample) and
`40.4% +/- 0.1% w/w (1981 sample) triacylglycerols and 16.1 (1977 sample)
`and 8.5 (1981 sample) percent free fatty acids. Id. at 822.
`Fricke notes that samples from the 1977 sample contained free fatty
`acid levels that were about twice that of the 1981 sample. Id. at 822. In
`contrast, samples of the same haul that had been cooked on board
`“immediately after hauling,” showed a free fatty acid content that “was
`much lower, ranging from 1% to 3% of total lipids.” Id. at 822–23.
`
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`4. Randolph
`Randolph discloses compositions for modulating an inflammatory or
`immunomodulatory response, including krill oil. Ex. 1011 ¶ 8. The krill oil
`of Randolph may be obtained from any member of the Euphausia family,
`including Euphausia superba, and typically contains “between about 300 mg
`and about 3000 mg of a krill oil ingredient.” Id. ¶¶ 39–40. Randolph further
`teaches that the composition can contain any amount of an astaxanthin
`ingredient, including at least about 1, 2, 3, 4, 5, 10, 15, 20, 25, 30, 35, 40,
`50, 60, 70, 80, or 90 percent astaxanthin, typically resulting in between
`about 0.5 mg and about 50 mg of astaxanthin in the product. Id. ¶ 44.
`Randolph explains that the ingredients of the composition can be
`processed into various “delivery systems,” such as capsules, soft gel
`capsules, tablets, gel tabs, lozenges, strips, granules, powders, concentrates,
`solutions, lotions, creams or suspensions. Id. ¶¶ 46, 52.
`5. Analysis of Claim 1
`a) “providing krill”
`Petitioner contends Fricke and Budziński teach or suggest providing
`krill. Ex. 1010, 822 (Fricke expressly disclosing catching krill (Euphausia
`superba)); Ex. 1008, 2 (Budziński disclosing providing “freshly harvested”
`krill); Ex. 1006 ¶¶ 439–440.
`Patent Owner does not contest that providing krill was known in the
`
`art.
`
`Upon review of the prior art of record, we find that “providing krill”
`was well known in the art and is expressly disclosed in Fricke and
`Budziński. Ex. 1010, 822; Ex. 1008, 2; see also Ex. 1032, 18 (Grantham
`disclosing the catching of krill); Ex. 1033 ¶ 5 (Yoshitomi disclosing the
`catching krill).
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`b) “treating said krill to denature lipases and phospholipases in said krill
`to provide a denatured krill product”
`Petitioner contends treating krill to denature lipases and
`phospholipases to form a denatured krill product was well known in the art,
`as evidenced by both Budziński and Fricke. Pet. 44. We agree.
`Budziński and Fricke both disclose the problem of decomposition of
`useful krill products due to krill’s very active system of proteolytic enzymes.
`For example, Budziński discloses that “[t]he main difficulty in krill
`processing is caused by the very active system of proteolytic enzymes” and
`lipases in krill, which cause the decomposition of phospholipids and, to a
`lesser extent, triglycerides. Ex. 1008, 6. Budziński further discloses that the
`result of enzyme activity “is an increase of free fatty acids (FFA)” within
`krill products. Id. Fricke similarly discloses that “residual lipolytic activity
`against phospholipids exists even at temperatures of -30 C and below” and
`result in increased levels of free fatty acids. Ex. 1010, 822.
`Both Budziński and Fricke also teach that cooking krill can denature
`the problematic lipases and phospholipases within krill, with Budziński
`further disclosing that the optimal cooking temperature is believed to be 80–
`85 ºC. Ex. 1008, 20; Ex. 1010, 822–823; Ex. 1006 ¶¶ 439–440 (Dr. Tallon
`testifying that the cooking procedures disclosed in Fricke and Budziński
`would result in a denatured krill product).
`Patent Owner does not contest that it was well known in the art that
`krill enzymes needed to be denatured soon after hauling krill on board a ship
`and that heating, as disclosed in Budziński and Fricke, was a standard
`process for denaturing krill enzymes that would result in a denatured krill
`product.
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`Upon review of the parties’ arguments and evidence, we find that one
`of ordinary skill in the art would have understood from the disclosures of
`Budziński and Fricke that krill enzymes should be denatured soon after krill
`are caught and that this process would form a denatured krill product.
`Ex. 1008, 9 (Budziński noting that processing of krill should occur as soon
`as possible after a catch), 20; Ex. 1010, 822–823.
`c) “storing said denatured krill product for a storage period of from 1 to
`24 months”
`Petitioner contends that processing methods involving storage of a
`denatured krill product for from 1 to 24 months are taught or suggested in
`both Budziński and Fricke. Pet. 45. We agree.
`Section 4.5 of Budziński discusses the standard method for producing
`krill meal, as well as the properties of the resulting krill meal. Ex. 1008, 18–
`22. In subsection 4.5.1, Budziński specifically notes that to increase yields,
`krill should not be stored for longer than 8–10 hours before processing, that
`the traditional method for krill meal production was “cooking and pressing
`or centrifuging and drying” the krill, and that an optimal cooking
`temperature of 80–85 ºC should be used to denature the krill. Id. at 20.
`In Section 4.5.2, Budziński notes that denatured krill meal has a
`red-pink color caused by the presence of astaxanthin and its esters, and that
`denatured krill meal had 55 μg/kg astaxanthin after seven months of storage.
`Id. at 21. Budziński further notes that, despite concerns that the highly
`unsaturated lipids in krill meal could be susceptible to oxidation,
`“[e]xtensive investigations” had shown that krill meal is “stable for 13
`months of storage without addition of antioxidants.” Id. at 21–22.
`Fricke discloses quick-freezing cooked krill and then storing these
`samples before analysis. Ex. 1010, 821–823. Fricke further discloses that
`
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`IPR2020-01532
`Patent 9,644,169 B2
`samples that were cooked before freezing had a much lower level of free
`fatty acids than krill frozen immediately after hauling onboard. Id. at 822–
`823.
`
`Petitioner, supported by the testimony of Dr. Tallon, asserts that given
`the disclosures of Budziński and Fricke, one of ordinary skill in the art
`would have understood that a denatured krill product could be stored for up
`to 13 months before extraction. Pet. 45, 65; Ex. 1006 ¶¶ 441–444.
`Patent Owner argues that Fricke contains no disclosure of how long
`the denatured krill were stored after being frozen, but does not contest
`Petitioner’s assertion that Budziński expressly teaches denatured krill meals
`that have been stored for at least 13 months.10 PO Resp. 38.
`On this record, we agree with Petitioner that one of ordinary skill in
`the art, considering the disclosures of Fricke and Budziński, would have
`understood that a denatured krill product could be successfully stored for up
`to 13 months.
`d) “after said storage period, extracting oil from said denatured krill
`product with a polar solvent”
`Petitioner contends extracting krill oil with a polar solvent was well
`known in the art, as expressly described in Catchpole, Budziński, and Fricke,
`and that one of ordinary skill in the art would have understood that a
`denatured krill product stored for up to 13 months could be successfully
`extracted using a polar solvent. Pet. 46. We agree.
`
`
`10 As discussed below, Patent Owner contests whether Budziński, or any
`other individual prior art reference, teaches or suggests denaturing a krill
`product, storing that product for 1 to 24 months, and then extracting krill oil
`from the denatured krill product. PO Resp. 36–40. Patent Owner also
`questions the quality of the krill meal stored for 13 months in Budziński. Id.
`at 38–39. We address those arguments in Section II.F.5.(d) below.
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`IPR2020-01532
`Patent 9,644,169 B2
`Fricke expressly discloses cooking a krill product to denature krill
`enzymes, storing this denatured product for a period of time, and then
`extracting a lipid fraction from the denatured krill product using a polar
`solvent. Ex. 1010, 821–823. Although the specific storage period is not
`expressly recited in Fricke, given the location of the vessel during krill
`capture and the fact that the krill were frozen into blocks, we agree with
`Dr. Tallon that one of ordinary skill in the art would have understood that
`the denatured krill was stored for more than a trivial period of time prior to
`extraction. Ex. 1006 ¶¶ 310–313; Ex. 1086 ¶ 61.
`Budziński discloses a krill meal that is stable for at least 13 months
`and that krill oil can be extracted from krill products using various organic
`solvents. Ex. 1008, 21–22, 24. Although Budziński does not expressly
`disclose extracting krill oil from a denatured krill product, such as krill meal
`that has been stored for 1 to 24 months, Dr. Tallon explains that because the
`denatured krill meal of Budziński is stable for at least 13 months, one of
`ordinary skill in the art would have understood that this krill meal could “be
`extracted just the same as a fresh krill meal” and would provide a usable
`krill oil product. Ex. 1006 ¶¶ 168–171.
`Catchpole discloses extracting krill oil from a freeze-dried krill
`powder using CO2 and ethanol, a polar solvent. Ex. 1009, 24:1–16.
`In view of the disclosures of Fricke, Budziński, and Catchpole,
`Petitioner contends one of ordinary skill in the art would have understood
`that denatured krill products could be stored for up to 13 months before
`successfully extracting a krill oil using a polar solvent. Pet. 46, 61.
`Patent Owner argues that none of the identified prior art references
`discloses using a polar solvent to extract krill oil from a denatured krill
`product that has been stored from 1 to 24 months. PO Resp. 37–39.
`
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`According to Patent Owner, Catchpole provides no storage information for
`its freeze-dried krill powder, Fricke “contains no teaching as to the storage
`time for the cooked krill,” and Budziński does not teach solvent extraction
`from a meal after any period of storage or that its krill meal was “stable”
`with respect to krill oil extr
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