`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
`Petitioner,
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`v.
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`AKER BIOMARINE ANTARCTIC AS
`Patent Owner.
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`Case IPR2020-01532
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`U.S Patent No. 9,644,169
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2020-01532
`U.S. Patent No. 9,644,169
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`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .......................................................................... ii
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`I.
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`II.
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`Statement of Relief Requested .............................................................. 1
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`Summary of the Proceedings ................................................................. 2
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`III. Argument ............................................................................................... 7
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`IV. Conclusion ........................................................................................... 15
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`CERTIFICATE OF SERVICE ......................................................................... i
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`TABLE OF AUTHORITIES
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`Cases
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`IPR2020-01532
`U.S. Patent No. 9,644,169
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`Eli Lilly, 902 F.2d 943, 945 (Fed. Cir. 1990)................................................................................ 13
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`Henny Penny Corporation v. Frymaster LLC, 938 F.3d 1324, 1330 (Fed. Cir. 2019)................. 12
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) ..... 10
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`Intelligent Bio-Sys., Inc., 821 F.3d 1359, 1367 (Fed. Cir. 2016) .................................................. 12
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1378 (Fed. Cir. 2016) .................................... 14, 15
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`Nuvasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016) (quoting 5 U.S.C. § 554) ............................. 14
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`SAS Institute, Inc. v. Complementsoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016) .............. 14, 15
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`SAS Institute, Inc. v. Iancu, ––– U.S. ––––, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018) .................. 9
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`Wasica Finance GmbH v. Continental Automotive Systems, Inc. 853 F.3d 1272, 1286-87 (Fed.
`Cir. 2017) .................................................................................................................................. 12
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`Statutes
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`35 U.S.C. §312(a)(3) .............................................................................................................. passim
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`ii
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`Patent Owner Aker Biomarine Antarctic AS (“Aker”) requests review by the
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`IPR2020-01532
`U.S. Patent No. 9,644,169
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`Director of the Board’s finding in its Final Written Decision (Paper 33 (“FWD”))
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`that claims 1-20 (collectively, the “challenged claims”) of U.S. Patent No.
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`9,664,169 (the “ ’169 patent”) are unpatentable. (FWD, 35).
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`I.
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`Statement of Relief Requested
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`In the FWD, the Board held the challenged claims were unpatentable as
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`obvious, concluding:
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`In consideration of the above, we find that Petitioner demonstrates by
`a preponderance of the evidence that claims 1-5, 7-15, and 17-20 are
`unpatentable as obvious over the combined teachings of Breivik II,
`Catchpole, Budziński, Fricke, and Randolph, and that claims 6 and 16 are
`unpatentable as obvious over the combined teachings of Breivik II,
`Catchpole, Budziński, Fricke, Randolph, and Sampalis I.
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`(Emphasis added) FWD, 34. However, as stated by the Board in Footnote 16: “As
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`noted above, we have considered Petitioner's grounds without relying on Breivik
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`II.” FWD, 35. Thus, the Board actually found the claims obvious over a sub-
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`combination (i.e., Catchpole, Budziński, Fricke, and Randolph for Ground 1 and
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`Catchpole, Budziński, Fricke, Randolph, and Sampalis I for Ground 2) of the
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`combination of references identified in the Petition and Instituted Grounds. In
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`doing so, the Board specifically avoided addressing Aker’s evidence that Breivik II
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`is not prior art due to earlier invention. Aker respectfully submits that the Board
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`erred by basing its decision on Grounds not including Breivik II, when both of the
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`1
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`Instituted Grounds specifically combined and relied on Breivik II. As a result,
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`Aker contends that Petitioner did not meets its burden of establishing obviousness
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`because Breivik II is not prior art, rendering both Instituted Grounds insufficient.
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`Aker respectfully requests that the FWD be vacated with respect to
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`unpatentability of the challenged claims and the case remanded to the Board for a
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`determination of whether Breivik II is prior art and decision on whether the
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`challenged claims are patentable over the actual requested and Instituted Grounds
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`that include Breivik II as the lead reference.
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`II.
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`Summary of the Proceedings
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`The ‘169 Patent contains claims to methods of extracting krill oil with
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`specific properties from a denatured krill material that has been stored from 1 to 24
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`months. FWD, 6.
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`The Petition (Paper 2, “Pet.”) provided the following chart in a section
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`entitled “Specific Statutory Grounds on which the Challenge is Based (37 C.F.R. §
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`42.104(b)(2)).” Pet., 10.
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`2
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`In Section VII of the Petition, Petitioner stated: “A discussion of Grounds 1 and 2
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`for claim invalidation is detailed below.” Pet., 42. Petitioner then presented
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`Grounds 1 and 2 under the following headings:
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` Ground 1: § 103(a) – Breivik II, Catchpole, Budziński, Fricke and
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`Randolph [Claims 1-5, 7-15, 17-20] (Emphasis added, Pet., 42); and
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` Ground 2: § 103(a) – Breivik II, Catchpole, Budziński, Fricke, Randolph
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`and Sampalis I [Claims 6 and 16]. (Emphasis added) Pet., 66.
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`In its discussion of Claim 1 under Ground 1, Petitioner concluded: “In view
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`of the foregoing, the method of producing krill oil as recited in claim 1 would have
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`been obvious based on Breivik II, Catchpole, Budziński, Fricke and Randolph.
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`Tallon Decl. (Exhibit 1006), ¶¶ 435-453.” (Emphasis added) Pet., 49. In its
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`discussion of independent Claim 12 under Ground 1, Petitioner concluded: “In
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`view of the foregoing, the method of producing krill oil as recited in claim 1 would
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`have been obvious based on Breivik II, Catchpole, Budziński, Fricke and
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`Randolph. Tallon Decl. (Exhibit 1006), ¶¶ 435-453.” (Emphasis added) Pet., 52-
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`53.
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`With respect to motivation to combine under Ground 1, Petitioner
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`concluded:
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`Accordingly, a POSITA would have possessed reasons and motivation to
`combine the processing, storage and extraction steps disclosed in Breivik
`II, Catchpole, Budziński and Fricke, and would have been motivated to look
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`3
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`to references such as Catchpole to ascertain the components and their
`respective amounts in krill oil extracts, and Randolph to ascertain how much
`desirable astaxanthin esters can be included in krill oil compositions. Tallon
`Decl. (Exhibit 1006), ¶¶ 77, 79, 494-496.
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`(Emphasis added) Pet. 66.
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`With respect to motivation to combine under Ground 1, Petitioner
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`concluded:
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`Consequently, a POSITA would have reasons and motivation to combine
`Sampalis I with the teachings of Breivik II, Catchpole, Budziński, Fricke
`and Randolph. Tallon Decl. (Exhibit 1006), ¶¶ 498-501.
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`(Emphasis added) Pet. 68.
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`The Board instituted the Inter Partes Review. (Institution Decision, Paper 6,
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`“ID”). In the ID, the Board reproduced the table from the Petition including the
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`Instituted Grounds in a section entitled “Prior Art and Asserted Grounds” :
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`ID, 6. The Board stated: “Petitioner contends that claims 1–5, 7–15, and 17–20
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`would have been obvious over the combined disclosures of Breivik II, Catchpole,
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`Budziński, Fricke, and Randolph. Pet. 42–66.” (Emphasis added) ID, 8. The Board
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`4
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`further stated: “Petitioner contends one of ordinary skill in the art would have
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`combined the various disclosures of Breivik II, Catchpole, Budziński, Fricke,
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`and Randolph to arrive at the subject matter of the challenged claims . . . .”
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`(Emphasis added) ID, 13. And that: “Accordingly, on this record, Petitioner
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`demonstrates a reasonable likelihood that claim 1 would have been obvious over
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`Breivik II, Catchpole, Budziński, Fricke, and Randolph.” (Emphasis added) ID,
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`13. With regard to Ground 2, the Board similarly stated: “Petitioner contends the
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`subject matter of claims 6 and 16 would have been obvious over the combined
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`disclosures of Breivik II, Catchpole, Budziński, Fricke, Randolph, and Sampalis
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`I.” (Emphasis added) ID, 16. The Board concluded “the information presented
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`shows a reasonable likelihood that Petitioner would prevail in establishing that
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`claims 1–20 of the ’169 patent are unpatentable on the grounds asserted in the
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`Petition.” ID, 16-17.
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`Relying on the clear statements in the ID that the Instituted Grounds both
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`required combination of Breivik II as the lead reference with the other listed
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`references, Aker responded, in part, by presenting evidence of antedation of
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`Breivik II by the inventors. (Patent Owner Response, Paper 9, “PO Resp.,” 17-36).
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`Specifically, Aker argued that Breivik II was not prior art and that “[s]ince Ground
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`1 relies on Breivik II as the lead reference both for specific claim elements as well
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`as motivation to combine the references, Ground 1 must be denied. As further
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`5
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`discussed below, Ground 2, which also relies on Breivik II, should be denied as
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`well.”
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`In Petitioner’s Reply (Paper 14, “Reply”), Petitioner stated: “As initial
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`matter, Patent Owner erroneously maintains the claims of the ‘169 patent must be
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`found patentable if Breivik II is antedated. POR, 6. Patent Owner ignores,
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`however, that one or more alternative references are provided for every limitation
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`for which Breivik II is cited. See, e.g., Petition, 69-89.” Reply, 7. That is the only
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`statement in the Reply that indicates there could be a challenge on a ground not
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`including Breivik II. Petitioner did not present specific arguments on any
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`alternative combination not including Breivik II.
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`Aker requested leave to file a motion to strike the portion of the Reply that
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`referred to Grounds other than those including Breivik II. The Board denied the
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`request, but allowed Aker to file a three page submission in lieu of the denial of the
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`motion to strike which identified improper evidence and argument in the Reply.
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`FWD, 2. Aker filed the submission (Paper 19), identifying Petitioner’s assertion
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`that there were pending grounds that did not include Breivik II (i.e., the statement
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`at page 7 of the Reply discussed infra) as a new argument. See FWD, 2. Petitioner
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`filed a response (Paper 21).
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`The Board ultimately found the claims obvious over a sub-combination of
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`references not including Breivik II. FWD, 34. In so doing, the Board did not
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`6
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`reach the issue of whether Breivik II was antedated by Aker’s evidence of earlier
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`invention. FWD, 12. The Board justified ignoring Breivik II as part of the
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`Instituted Grounds because “Petitioner consistently relies on multiple prior art
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`references to establish that a particular limitation is disclosed in the prior art, and at
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`no point does it rely solely on Breivik II as describing any particular limitation.”
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`FWD, 11. The Board further found that “there is not any particular reason to
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`combine the prior art references set forth by Petitioner that relies solely on Breivik
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`II.” Id. And that: “Given the structure of the Petition and its reliance on multiple,
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`independent references to establish obviousness, we find that the Petition does not
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`necessarily fail if Breivik II is removed from consideration.” FWD, 12.
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`Finally, the Board appeared to admit that each Instituted Ground did include
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`Breivik II: “As noted by Patent Owner, each ground asserted by Petitioner includes
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`Breivik II.” FWD, 33. But then reasoned further that “Petitioner replies upon
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`multiple references as teaching or suggesting the subject matter recited in the
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`challenged claim” and that a “Petitioner may . . . rely on multiple references each
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`of which independently establishes that a particular claim limitation was known in
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`the art.” Id.
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`III. Argument
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`Aker respectfully submits that the Board committed error by finding the
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`claims unpatentable over a combination of references that was different from the
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`7
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`Grounds stated in the Petition and Institution Decision. The Board
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`misapprehended that binding precedent precludes the Board from adopting in a
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`Final Written Decision obviousness theories not proposed by Petitioner. Indeed,
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`there is clear legal error in view of 35 U.S.C. §312(a)(3), the Administration
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`Procedure Act, Federal Circuit precedent, and the PTAB’s Trial Practice Guide.
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`The Board’s finding that it could rely on a sub-combination of references rather
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`than the actual Instituted Grounds (because Petitioner relied on multiple references
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`which independently establish a particular claim limitation, FWD, 33) is not
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`supported in the FWD by reference to any statute or precedent for inter partes
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`review proceedings. As explained below, the Board’s actions directly contradict 35
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`U.S.C. §312(a)(3). If Aker had been provided notice that specific sub-
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`combinations in this IPR, it could have used its limited pages and its expert to
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`specifically address why those sub-combinations fail. Further, it would not be
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`possible for Aker to address all possible sub-combinations. A holding that all
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`possible sub-combinations of an Instituted Ground are in play in an instituted IPR
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`would likely lead to gaming by future petitioners.
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`The Supreme Court has explained that “in establishing inter partes review,
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`Congress set forth “a process in which it’s the petitioner, not the Director, who
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`gets to define the contours of the proceeding.” SAS Institute, Inc. v. Iancu, –––
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`U.S. ––––, 138 S.Ct. 1348, 200 L.Ed.2d 695 (2018). The Court held that if the
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`8
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`Director institutes review proceedings, the Board’s review must proceed “in
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`accordance with or in conformance to the petition,” (Id. at 1356) including “ ‘each
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`claim challenged’ and ‘the grounds on which the challenge to each claim is based.’
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`” Id. at 1355 (quoting 35 U.S.C. §312(a)(3)).
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`The Court stated: “Nothing suggests the Director enjoys a license to depart
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`from the petition and institute a different inter partes review of his own design.”
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`Id. at 1356 (emphasis in original). Thus the Court emphasized that “the petitioner’s
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`petition, not the Director’s discretion, is supposed to guide the life of the
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`litigation,” and that “the petitioner’s contentions, not the Director’s discretion,
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`define the scope of the litigation all the way from institution through to
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`conclusion.” Id. at 1356-57. Indeed, the petitioner is the “master of its
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`complaint.” Id. at 1355.
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`As further explained by the Federal Circuit: “[i]t is of the utmost importance
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`that petitioners in the IPR proceedings adhere to the requirement that the initial
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`petition identify ‘with particularity’ the ‘evidence that supports the grounds for the
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`challenge to each claim.’ ” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
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`821 F.3d 1359, 1369 (Fed. Cir. 2016) (internally quoting 35 U.S.C. §312(a)(3)).
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`Aker respectfully submits that in the instant case the Board has departed
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`from the Petition (and ID) and rendered a decision on a combination of references
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`that was not one of the Grounds on which inter partes review was requested or
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`9
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`instituted. As highlighted above, the Petition presented two grounds, each of which
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`listed Breivik II as the lead reference. As further discussed above, in both the
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`statement of the statutory grounds (Pet., 10) and discussion of the two grounds
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`(Pet., 42-68), Petitioner consistently used the conjunction “and” when referring to
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`the combination of references in both Grounds as well as when arguing motivation
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`to combine and reasonable expectation of success. Petitioner did use the
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`conjunction “or” in its claim charts with respect to what references the claim
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`elements are allegedly found in, but there is no indication in the claim charts that
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`Petitioner intended to rely on a sub-combination of the five references specifically
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`cited in Ground 1 and the six references cited in Ground 2, both of which required
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`Breivik II as the lead reference.
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`When deciding to institute, the Board appeared to take Petitioner at its word
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`that the Grounds advanced in the Petition included Breivik II, stating:
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` “Petitioner contends that claims 1–5, 7–15, and 17–20 would have been
`obvious over the combined disclosures of Breivik II, Catchpole,
`Budziński, Fricke, and Randolph. Pet. 42–66.” (Emphasis added) ID, 8.
` “Petitioner contends one of ordinary skill in the art would have combined
`the various disclosures of Breivik II, Catchpole, Budziński, Fricke, and
`Randolph to arrive at the subject matter of the challenged claims . . . .”
`(Emphasis added) ID, 13.
` “Accordingly, on this record, Petitioner demonstrates a reasonable
`likelihood that claim 1 would have been obvious over Breivik II,
`Catchpole, Budziński, Fricke, and Randolph.” (Emphasis added) ID, 13.
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`10
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`However, instead of rendering a decision based on the Grounds requested by
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`Petitioner and instituted in the ID, the Board held the claims unpatentable over
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`sub-combinations of references that did not include Breivik II. For example, the
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`FWD restates Instituted Ground 1 as follows: “Petitioner contends that the subject
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`matter of claims 1-5, 7-15 and 17-20 would have been obvious over the combined
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`disclosures of Catchpole, Budziński, Fricke and Randolph.” FWD, 12. By deleting
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`Breivik II from the Instituted Grounds, the Board introduced a new theory of
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`obviousness that did not rely on Breivik II. For example, neither the Petition nor
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`the ID explained why a person of ordinary skill in the art would specifically start
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`with and modify either Fricke or Budziński (in the absence of Breivik II) in view
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`of Catchpole and Randolph to arrive at the claimed invention. As another example,
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`Petitioner did not present the Statutory Statement of Grounds in the Petition as
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`Breivik II or Budziński or Fricke in combination with Catchpole or Randolph and
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`instead chose to define the grounds as Breivik II, Budziński, Fricke, Catchpole and
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`Randolph. See Pet., 42, 66.
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`Since Petitioner is the “master of its complaint” as described by the Supreme
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`Court in SAS, it could have presented Grounds that did not specifically rely on
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`Breivik II or have phrased its Grounds in a way that provided notice that it was
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`relying or intending to rely on the references in the alternative. The Grounds listed
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`in the Petition and instituted by the Board failed to do this.
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`11
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`The Federal Circuit has held that “shifting arguments” to a new theory of
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`obviousness absent from the petition “is foreclosed by statute, our precedent, and
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`Board guidelines.” Wasica Finance GmbH v. Continental Automotive Systems, Inc.
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`853 F.3d 1272, 1286-87 (Fed. Cir. 2017)(citing 35 U.S.C. §312(a)(3) as requiring
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`petitions to identify “with particularity . . . the grounds on which the challenge to
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`each claim is based.”). Aker respectfully submits that by removing Breivik II from
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`the Instituted Grounds (and the statement of Statutory Grounds requested in the
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`Petition), the Board introduced a new theory of obviousness in contravention of the
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`statutes and precedent discussed above. This is clear error.
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`Additionally, the Federal Circuit has held: “Because of the expedited nature
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`of IPR proceedings, ‘[i]t is of the utmost importance that petitioners in the IPR
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`proceedings adhere to the requirement that the initial petition identify ‘with
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`particularity’ the ‘evidence that supports the grounds for the challenge to each
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`claim.’ ” Henny Penny Corporation v. Frymaster LLC, 938 F.3d 1324, 1330 (Fed.
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`Cir. 2019)(citing Intelligent Bio-Sys., Inc., 821 F.3d 1359, 1367 (Fed. Cir. 2016).
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`Thus, it was reasonable that Aker relied on the statements in the Petition and ID
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`that identified the Instituted Grounds as including Breivik II. Indeed, if the Board
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`can depart from the Instituted Grounds as stated in the Institution Decision, then all
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`possible sub-combinations of references could be applied - numbering 120
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`12
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`separate possible combinations of 5 references at the low end in Ground 1 and 720
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`possible combinations of 6 references at the low end in Ground 2.
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`Because the proceeding is expedited, Aker could not reasonably be expected
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`to address all of the possible sub-combinations of references when the Petition and
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`Instituted Grounds listed in the ID did not include or refer those sub-combinations.
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`Instead, Aker relied on the Instituted Grounds as stated and used its limited time
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`and pages in its Response to remove Breivik II as a reference. Moreover, because
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`the Board pivoted from the Instituted Grounds to a different theory of obviousness
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`based on the sub-combination of references not including Breivik II, Aker had no
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`opportunity to present expert testimony that addressed the specific sub-
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`combinations of references and make specific arguments as to why the sub-
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`combinations failed. Further, it well-established that once a prima facie case of
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`obviousness has been rebutted, all evidence must be considered anew. In re Eli
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`Lilly, 902 F.2d 943, 945 (Fed. Cir. 1990). The expedited nature of IPR proceedings
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`does not allow the decision maker to start over at some time after the institution
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`decision. See, e.g., 2019 Consolidated Trail Practice Guide, 74 (prohibiting parties
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`from submitting evidence for a prima facie showing of obviousness in a reply).
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`Holding that the Board may rely on a sub-combination of multiple cited
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`references when the Petition and ID unambiguously indicate that the Grounds
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`include all of the cited references would invite petitioners to state statutory
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`13
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`grounds as including a list of “possible” references, wait for the patent owner’s
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`response, and then devise a sub-combination of references in reply to the
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`petitioner’s argument. This scenario is in contravention of 35 U.S.C. §312(a)(3)
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`and should not be the policy of the Board.
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`The Board’s adoption of an unpatentability theory not asserted by Petitioner
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`violates the Administrative Procedure Act (“APA”). Under the APA an “agency
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`must ‘timely inform[ ]’ the patent owner of ‘the matters of fact and law asserted,’”
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`as well as provide patent owner with an opportunity to respond after notice is
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`provided. In re Nuvasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016) (quoting 5
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`U.S.C. § 554). This notice requirement of the APA is, in part, intended to prevent a
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`party or the PTAB from “chang[ing] theories in midstream.” SAS Institute, Inc. v.
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`Complementsoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016). This notice
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`requirement precludes the PTAB from allowing or asserting new theories to which
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`a patent owner has no opportunity to respond. In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364, 1378 (Fed. Cir. 2016).
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`As discussed above, the Board’s reliance for the first time, in the FWD, on
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`the sub-combinations of Budziński, Catchpole, Fricke and Randolph (new Ground
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`1) and Budziński, Catchpole, Fricke, Randolph and Sampalis II (new Ground 2) to
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`replace the Instituted Grounds that both included Breivik II violates the APA.
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`SAS, 825 F.3d at 1351-52 (vacating-in-part decision where the Board “change[d]
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`14
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`theories in midstream” and applied a claim interpretation neither party advanced);
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`IPR2020-01532
`U.S. Patent No. 9,644,169
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`Magnum Oil, 829 F.3d at 1380-81 (“[W]e find no support for the PTO’s position
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`that the Board is free to adopt arguments on behalf of petitioners that could have
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`been, but were not, raised by the petitioner during an IPR.”). It is respectfully
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`submitted that the Board improperly amended the theory presented by Petitioner.
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`In summary, Aker respectfully submits that the evidence of record
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`demonstrates that the Board made clear errors in the FWD.
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`IV. Conclusion
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`Aker respectfully requests that the FWD be vacated with respect to claims 1-
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`20 of the ’169 patent and remanded to the Board for a determination of whether
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`Breivik II is prior art and decision on whether the challenged claims are patentable
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`over the Instituted Grounds that necessarily include Breivik II.
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`Dated: May 5, 2022 Respectfully submitted,
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` /David A. Casimir /
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`Reg. No. 42,395
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on this 5th day of May 2022, a copy of
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`IPR2020-01532
`U.S. Patent No. 9,644,169
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`the foregoing Patent Owner’s Request for Director Review was served in its
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`entirety electronically (as consented to by Petitioner) to the attorneys of record as
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`follows:
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`James F. Harrington
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`Reg. No. 44,741
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`Hoffmann & Baron, LLP
`jfhdocket@hbiplaw.com
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`Ronald J. Baron
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`Reg. No. 29,281
`Hoffman & Baron, LLP
`rjbdocket@hbiplaw.com
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`169ipr@hbiplaw.com
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`Michael I. Chakansky
`Reg. No. 31,600
`Hoffman & Baron, LLP
`micdocket@hbiplaw.com
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`John T. Gallagher
`Reg. No. 35,516
`Hoffman & Baron, LLP
`jtgdocket@hbiplaw.com
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`By: /David A. Casimir/
`David A. Casimir, Ph.D.
`Registration No. 42,395
`Counsel for Patent Owner
`CASIMIR JONES, S.C.
`2275 Deming Way
`Suite 310
`Middleton, Wisconsin 53562
`(608) 662-1277
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