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`Paper 15
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
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`Petitioner
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`v.
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`AKER BIOMARINE ANTARCTIC AS
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`Patent Owner
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`Case No.: IPR2020-01532
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`U.S. Patent 9,644,169
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`Issue Date: May 9, 2017
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`Title: Bioeffective Krill Oil Compositions
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.24(c)
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`Inter Partes Review Case No.: IPR2020-01532
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`U.S. Patent No. 9,644,169
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`PETITIONER’S “KRILL MEAL” CONSTRUCTION
`IS SUPPORTED BY THE INTRINSIC EVIDENCE .................................... 2
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`I.
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`II.
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`V.
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`III. COLLATERAL ESTOPPEL APPLIES .......................................................... 6
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`IV. PATENT OWNER’S ANTEDATION PROOFS ARE INSUFFICIENT ...... 7
`A.
`Patent Owner’s Burden To Prove Actual Reduction To Practice ........ 8
`B.
`Dr. Tilseth’s Reduction to Practice Story Is Uncorroborated ............... 9
`C.
`Stempel Cannot Cure Patent Owner’s Lack Of Corroboration ........... 15
`CLAIMS 1-20 WOULD HAVE BEEN OBVIOUS .....................................18
`A.
`Patent Owner’s Piece-Meal Prior Art Attack Is Improper .................. 18
`B.
`A POSITA Possessed Reasons And Motivation To Combine
`Petitioner’s References ........................................................................ 23
`Dependent Claims 4 and 14 Are Not Patentable ................................. 28
`Patent Owner’s Arguments Regarding Dependent
`Claims 6 and 16 Are Meritless ............................................................ 29
`VI. CONCLUSION ..............................................................................................30
`VII. CERTIFICATE OF COMPLIANCE ............................................................31
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`C.
`D.
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`Inter Partes Review Case No.: IPR2020-01532
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`U.S. Patent No. 9,644,169
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`TABLE OF AUTHORITIES
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`CASES
`ACCO Brands Corp. v. Fellowes, Inc.,
`813 F.3d 1361 (Fed. Cir. 2016) ................................................................... 27
`Apator Miitors ApS v. Kamstrup A/S,
`887 F.3d 1293 (Fed. Cir. 2018) ..................................................................... 8
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002) ................................................................... 13
`Cooper v. Goldfarb,
`154 F.3d 1321(Fed. Cir. 1998) .................................................................... 14
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ..................................................................... 8
`EmeraChem Holdings v. Volkswagon Group of Am.,
`859 F.3d 1341 (Fed. Cir. 2017) ................................................................... 11
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ................................................................... 26
`In re Garner,
`508 F.3d 1376 (Fed. Cir. 2007) ................................................................... 14
`Grit Energy Sols., LLC v. Oren Techs., LLC,
`957 F.3d 1309 (Fed. Cir. 2020) ................................................................... 22
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007)..................................................................................... 23
`LG Elecs., Inc. v. Conversent Wireless Licensing S.A.R.L.,
`759 F. App’x 917 (Fed. Cir. 2019) .............................................................. 28
`In re Magnum Oil Tools,
`829 F.3d 1364 (Fed. Cir. 2016) ..................................................................... 8
`Medichem, S.A. v. Rolabo, S.L.,
`437 F.3d 1157 (Fed. Cir. 2006) ................................................................. 8, 9
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) ................................................................... 21
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`Inter Partes Review Case No.: IPR2020-01532
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`U.S. Patent No. 9,644,169
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`Newkirk v. Lulejian,
`825 F.2d 1581 (Fed. Cir. 1987) ................................................................... 14
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ................................................................... 10
`Pfizer v. Genentech,
`IPR 2017-01488 (PTAB Nov. 29 2018) ...................................................... 17
`Randall Mfg; v. Rea,
`733 F.3d 1355 (Fed. Cir. 2013) ................................................................... 19
`Seabed Geosolutions (US) Inc. v. Magseis FF LLC,
`Appeal No. 2020-1237 (Fed. Cir. Aug. 11, 2021) ......................................... 5
`Software Rights Archive, LLC v. Facebook, Inc.,
`659 F. App’x 627 (Fed. Cir. 2016) .............................................................. 19
`In re Steed,
`802 F.3d 1311 (Fed. Cir. 2015) ................................................................... 16
`In re Stempel,
`241 F.2d 755 (CCPA 1957) ......................................................................... 15
`Swartz v. USPTO,
`743 F. App’x 426 (Fed. Cir. 2018) ................................................................ 7
`In re Tancyn,
`146 USPQ 289 (CCPA 1965) ...................................................................... 18
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ....................................................................... 5
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`Inter Partes Review Case No.: IPR2020-01532
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`I.
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`INTRODUCTION
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`U.S. Patent No. 9,644,169
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`Patent Owner wants the Board to cast aside common sense and find simply
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`storing denatured krill for 1-24 months prior to solvent extraction is novel and
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`affords patentability to the process recited in the ‘169 patent. It was known,
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`however, that sufficiently heating krill prevents the rapid enzymatic decomposition
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`of krill lipids by the lipases and phospholipases, and results in a stable denatured
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`product with improved storage properties. It was also unremarkable that krill
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`caught in the middle of the Antarctic Ocean would need to be stored for at least a
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`month while being transported back to land for further processing.
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`It is not disputed, with the exception of the ‘169 patent’s 1-24 month storage
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`limitation, the Board, in finding U.S. Patent Nos. 9,028,887, 9,375,453, 9,078,905,
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`9,072,752 and 9,320,765 unpatentable, determined claims virtually identical to the
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`claims of the ‘169 patent were obvious, and the ‘169 patent’s limitations were
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`disclosed in the prior art.
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`To avoid the sixth “krill oil” patent in the same patent family from being
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`found unpatentable, Patent Owner now argues Breivik II does not qualify as prior
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`art because the ‘169 patent’s invention was reduced to practice before Breivik II’s
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`priority date. This attempt to antedate Breivik II, however, rests on the
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`uncorroborated testimony of one of the ‘169 patent’s inventors, Dr. Tilseth, that
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`“heating at the cooking stage” denatures lipases and phospholipases present in
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`U.S. Patent No. 9,644,169
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`krill.
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`Patent Owner’s remaining arguments that there was no motivation to
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`combine the prior art to arrive at the challenged claims rigidly focuses on the
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`isolated teachings of individual prior art references, rather than the combined
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`teachings of those references and a POSITA’s creativity and common sense. The
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`preponderance of evidence demonstrates that claims 1-20 of the ‘169 patent would
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`have been obvious. See Petition, pp. 42-89.1
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`II.
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`Patent Owner’s
`Construction
`“krill powder resulting from
`the processing of krill.”
`POR, 8-12.
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`PETITIONER’S “KRILL MEAL” CONSTRUCTION
`IS SUPPORTED BY THE INTRINSIC EVIDENCE
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`Petitioner’s Construction
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`“processed krill with reduced
`water content from which oil can
`be extracted.” Tallon Decl., ¶¶
`134-152; Tallon Reply, ¶¶ 34-43.
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`Patent Owner’s proposed construction is wrong.
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`1 Petitioner relies on its Petition (Paper 2), Tallon Decl. (Exhibit 1006) and Tallon
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`Reply (Exhibit 1086).
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`2
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`First, Patent Owner’s construction is inconsistent with the intrinsic evidence.
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`Tallon Decl., ¶¶ 134-143, 148-152; Tallon Reply, ¶¶ 34, 40-43. For example, the
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`‘169 patent provides that “krill is wet pressed to obtain oil and meal. . . . [T]he
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`meal is then heated . . . to denature the proteins.” Exhibit 1001, 10:50-55
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`(emphasis added). This “wet pressed” krill is not a powder, and is not denatured.2
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`Tallon Reply, ¶¶ 34, 43. Additionally, Example 6 states: “Water and a small
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`amount of oil were removed in a screw press . . . and the denatured meal was
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`[then] dried under vacuum. . . .” Exhibit 1001, 31:37-40 (emphasis added).
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`Because water is subsequently removed by drying, this “denatured meal” is not a
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`“powder.” Tallon Reply, ¶¶ 34, 43. The ‘169 patent also provides that denatured
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`krill “is then pressed to yield a press cake.” Exhibit 1001, 10:55-57 (emphasis
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`added). A “press cake” indicates that water was pressed out, not that the “cake” is
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`a powder. Tallon Reply, ¶¶ 34, 43. Example 7 also teaches: “Krill lipids were
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`extracted from krill meal (a food grade powder). . . .” Exhibit 1001, 31:58-59.
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`2 Neither construction requires “krill meal” to be denatured. Tallon Reply, ¶ 35.
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`3
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`The ‘169 patent describes different “krill meals” obtained from different
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`processes. The common denominator of the krill meal obtained from these
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`processes is not that it is a powder, but rather the krill meal has a reduced water
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`content. Tallon Reply, ¶¶ 34, 41, 43.3
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`Patent Owner interjects the concept of “particle size reduction” into its
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`construction by equating the “pressing,” “crushing,” and “grinding” steps
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`described in the ‘169 patent with a “reduction in particle size.” POR, 9.
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`However, pressing or squeezing krill to remove water does not form a “powder” or
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`a “free flowing material.” Tallon Reply, ¶¶ 38, 40-43.4
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`3 The phrases “krill meal” and “krill powder” appear in the ‘169 patent
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`specification and in an exhibit cited by Patent Owner suggesting that these phrases
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`have different meanings. Compare Exhibit 1001, 20:58, 32:64 with Exhibit 2013,
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`p. 0007, Table 3.
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`4 Patent Owner’s suggestion that “krill meal” is a “free flowing powder” is
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`curious. Exhibit 2003, p. 0017 describes two “krill meals” having flow
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`numbers of 4.8 and 6.2. Yet, flow numbers “above 5 signif[ies] a powder
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`with poor flow properties.” Exhibit 2013, p. 0007; see Tallon Reply, ¶ 41.
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`The intrinsic evidence unambiguously supports Petitioner’s proposed
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`construction.
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`Second, the Federal Circuit has held intrinsic evidence must be consulted
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`first, and extrinsic evidence is only considered if the construction remains
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`ambiguous after review of the intrinsic record:
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`[T]he court should look first to the intrinsic evidence
`of record. . . . Such intrinsic evidence is the most
`significant source of the legally operative meaning of
`disputed claim language.
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`* * *
` In most situations, an analysis of the intrinsic evidence
`alone will resolve any ambiguity in a disputed claim
`term. In such circumstances, it is improper to rely on
`extrinsic evidence.
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`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582-83 (Fed. Cir. 1996)
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`(emphasis added); see Seabed Geosolutions (US) Inc. v. Magseis FF LLC, Appeal
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`No. 2020-1237 (Fed. Cir. Aug. 11, 2021) (Final Written Decision vacated because
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`the PTAB relied on extrinsic evidence). Ignoring Federal Circuit precedent, Dr.
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`Jaczynski begins and ends his claim construction by relying on extrinsic evidence
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`(i.e., a standard dictionary and one prior art reference), and only then cherry-picks
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`excerpts from the intrinsic record, hoping to validate his construction. POR, 9;
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`5
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`Exhibit 2015, ¶ 14. Notably, the dictionary definition, which Dr. Jaczynski
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`considers “intrinsic evidence,” not only lacks a publication date, but is also
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`untethered to the ‘169 patent’s subject matter and is applicable to “plant seeds
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`crushed to make flour or for animal food.” Exhibit 2016; Tallon Reply, ¶ 36;
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`Exhibit 1070 (Jaczynski Dep.), 22:18-23:1; 26:15-27:25 174:3-16.5
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`Finally, Patent Owner criticizes Dr. Tallon’s construction because he
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`mistakenly mentioned the “broadest reasonable construction” instead of the
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`Phillips standard. POR, 8-9. However, Dr. Tallon expressly testified that his
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`constructions would be the same under either standard. Tallon Reply, ¶ 33.
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`III. COLLATERAL ESTOPPEL APPLIES
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`With the exception of Budziński and its disclosure of krill meal storage for
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`at least 13 months, Petitioner’s references were analyzed by the Board in the Final
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`Written Decisions finding five other “krill oil” patents in the same family as the
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`5 In IPR2017-00746, the parties offered the same constructions of “denature
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`lipases and phospholipases” advanced in this proceeding. The Board ruled
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`“no explicit construction” was necessary. Exhibit 1104, 11-12.
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`6
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`‘169 patent unpatentable. Exhibits 1103-1104, 1129, 1157-1159. Patent Owner,
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`U.S. Patent No. 9,644,169
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`however, wants the Board to ignore its previous analyses of this same prior art.
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`See POR, 12-16. Because the inclusion of an intuitive and common sense storage
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`limitation does not materially alter the question of the ‘169 patent’s
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`unpatentability, collateral estoppel is applicable. See Swartz v. USPTO, 743 F.
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`App’x 426, 428 (Fed. Cir. 2018).
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`IV. PATENT OWNER’S ANTEDATION PROOFS
`ARE INSUFFICIENT
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`As initial matter, Patent Owner erroneously maintains the claims of the ‘169
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`patent must be found patentable if Breivik II is antedated. POR, 6. Patent Owner
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`ignores, however, that one or more alternative references are provided for every
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`limitation for which Breivik II is cited. See, e.g., Petition, 69-89.
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`The foundation of Patent Owner’s argument that Breivik II does not qualify
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`as prior art is the testimony of an inventor of the ‘169 patent, Dr. Tilseth, that the
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`invention recited in the ‘169 patent was actually reduced to practice before Breivik
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`II’s November 16, 2006 priority date. See, e.g., POR, 20-24. However, evidence
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`corroborating Dr. Tilseth’s testimony that “[h]eating of the krill material was
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`sufficient to denature lipases and phospholipases occurs at the cooking stage”
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`was not proffered by Patent Owner. The absence of independent corroboration of
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`Dr. Tilseth’s testimony that denaturation occurs during the “cooking stage” is fatal
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`to Patent Owner’s attempt to antedate Breivik II.
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`A.
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`Patent Owner’s Burden To Prove
`Actual Reduction To Practice
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`Patent Owner “bears the burden of establishing that its claimed invention is
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`entitled to an earlier priority date than an asserted prior art reference.” In re
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`Magnum Oil Tools, 829 F.3d 1364, 1375-76 (Fed. Cir. 2016). Thus, Patent Owner
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`must prove an actual reduction to practice before Breivik II’s priority date, “not
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`[Petitioner] prove [Patent Owner] did not.” Apator Miitors ApS v. Kamstrup A/S,
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`887 F.3d 1293, 1297 (Fed. Cir. 2018); see Dynamic Drinkware, LLC v. Nat’l
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`Graphics, Inc., 800 F.3d 1375, 1378-80 (Fed. Cir. 2015). To satisfy this burden,
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`Patent Owner must demonstrate performance of a process meeting all limitations
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`of the claimed invention and show the invention worked for its intended purpose.
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). However,
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`evidence of actual reduction to practice cannot rest on inventor testimony. Id. at
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`1170-71. Instead, Patent Owner must proffer independent evidence corroborating
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`Dr. Tilseth’s testimony. Id. at 1171-72 (“Even the most credible inventor
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`testimony is a fortiori required to be corroborated by independent evidence. . . .”).
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`A key limitation of independent claims 1 and 12 is the denaturation of krill
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`lipases and phospholipases. Consequently, Patent Owner must proffer evidence,
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`apart from Dr. Tilseth’s testimony, showing krill was denatured and oil extracted
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`from that denatured krill product.
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`B. Dr. Tilseth’s Reduction to Practice Story Is Uncorroborated
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`Dr. Tilseth’s testimony that denaturation occurs during the “cooking stage”
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`is the linchpin of Patent Owner’s attempt to antedate Breivik II, and is based solely
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`on his interpretation below of Sections 6.1-6.2 of Exhibit 2003:
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`The krill meal was produced by a standard meal process
`where fresh krill is brought on board the ship, cooked,
`pressed and decanted, and then dried to provide the krill
`meal. . . . Heating of the krill material sufficient to
`denature lipases and phospholipases occurs at the
`cooking stage prior to decanting/pressing.
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`Exhibit 2001, ¶ 8 (emphasis added); see POR, 20.
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`Sections 6.1-6.2, however, do not indicate:
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`•
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`krill was actually processed in a “standard meal process,” or provide
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`the operating conditions of such a process;
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`•
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`the krill fishing vessel was equipped with a “standard compact fish
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`•
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`meal factory,” or explain what that phrase means;
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`there was an actual “cooking stage;”
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`during the “cooking stage” krill was heated to a sufficient
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`temperature for a sufficient duration to denature krill lipases
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`and phospholipases.
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`Apart from Sections 6.1-6.2, no other evidence is proffered by Patent Owner
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`to corroborate Dr. Tilseth’s testimony that denaturation occurs during the “cooking
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`stage.” See, e.g., POR, 20, 25-26, 30-31. Additionally, neither Sections 6.1-6.2
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`nor any of the Exhibits accompanying Dr. Tilseth’s Declaration disclose
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`“cooking,” a “cooking stage,” a cooking temperature or duration, or a denatured
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`krill product. Tallon Reply, ¶¶ 13-14, 23, 28-29.
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`Dr. Tilseth’s post-hoc interpretation of two sections from this 15-year old
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`document cannot be used to backfill the gaps in what is not found within the four
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`corners of Sections 6.1-6.2. In fact, the Federal Circuit has rejected the same
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`circular logic underlying Patent Owner’s attempt to have Dr. Tilseth “self-
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`corroborate” Sections 6.1-6.2:
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`It would be strange indeed to say that [an inventor], who
`filed the . . . affidavit that needs corroborating, can by his
`own testimony provide that corroboration.
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`In re NTP, Inc., 654 F.3d 1279, 1292 (Fed. Cir. 2011).
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`Any belated attempt by Patent Owner to disavow Dr. Tilseth’s testimony in
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`favor of Dr. Jaczynski’s deposition testimony that denaturation occurs, not during
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`the “cooking stage” as the inventor testified, but during a subsequent “drying
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`stage,” should be rejected. Instead of corroborating Dr. Tilseth’s testimony that
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`“[h]eating of the krill material sufficient to denature lipases and phospholipases
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`occurs at the cooking stage prior to decanting/pressing,” Dr. Jaczynski offers
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`contradictory deposition testimony that denaturation occurs during a subsequent
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`“drying stage,” calling into question the very credibility Dr. Tilseth’s testimony
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`underlying this inventor’s reduction to practice story. See Tallon Reply, 28;
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`EmeraChem Holdings v. Volkswagon Group of Am., 859 F.3d 1341, 1348 (Fed.
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`Cir. 2017) (evidence evaluated “so that a sound determination of the credibility of
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`the inventor’s story may be reached”). Patent Owner should not be permitted to
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`disown Dr. Tilseth’s sworn testimony.
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`Additionally, any new argument by Patent Owner that denaturation occurs
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`during the “drying stage” and a reduction of moisture content is evidence of
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`denaturation is actually belied by Dr. Jaczynski’s own testimony. For example,
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`Dr. Jaczynski conceded that “drying” could be conducted at various temperatures
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`for various durations, and that those conditions were needed to determine whether
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`denaturation occurred. Exhibit 1070 (Jaczynski Dep.), 134:21-135:7; 145:12-
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`146:4; 177:13-21; 178:11-16; Tallon Reply, ¶¶ 15-17, 19-21, 42. Importantly,
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`Exhibit 2003 fails to provide the temperature and duration for the “drying stage.”
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`Tallon Reply, ¶ 19. Additionally, Dr. Jaczynski did not know the temperature
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`required to denature krill lipases and phospholipases. Exhibit 1070 (Jaczynski
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`Dep.) 142:4-10; 145:12-24.6 Nor could he identify any references supporting his
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`new testimony that reduction of moisture content is evidence of denaturation. Id.,
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`183:13-184-2.
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`Finally, Dr. Jaczynski’s Declaration never revealed, much less discussed, his
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`new theory regarding denaturation in connection with Dr. Tilseth’s reduction to
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`practice story. Instead, the only reference to “cooking” or “drying” in Dr.
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`6 In fact, Patent Owner’s expert asserted “cooking” is insufficient to confirm that
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`denaturation has actually occurred. Exhibit 1070 (Jaczynski Dep.), 134:21-135:7.
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`12
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`Jaczynski’s Declaration is in the chart reproduced verbatim from Patent Owner’s
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`U.S. Patent No. 9,644,169
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`Response in which he did not contest Dr. Tilseth’s testimony that denaturation
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`occurred during the “cooking stage.” POR, 24-35.7 Any attempt by Patent Owner
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`to disclaim Dr. Tilseth’s testimony and change his reduction to practice story
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`would seriously prejudice Petitioner and should not be permitted.
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`At bottom, Dr. Jaczynski’s deposition testimony does not alter the fact that
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`Patent Owner failed to proffer sufficient corroboration of Dr. Tilseth’s testimony
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`that the krill referenced in Sections 6.1-6.2 was denatured during the “cooking
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`stage.”
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`Exhibits 2005 and 2010 are meeting notes while Exhibit 2008 is a draft
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`agreement - - each prepared by Dr. Tilseth.8 Patent Owner, however, cannot rely
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`on these exhibits to corroborate Dr. Tilseth’s opinion that krill oil was extracted
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`and then encapsulated. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002)
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`(“The Board did not err in holding that an inventor’s own unwitnessed
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`7 This identical chart is also reproduced in Dr. Tilseth’s Declaration. Exhibit
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`2001, ¶17.
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`8 Exhibits 2006 and 2011 purportedly are translations of Exhibits 2005 and 2010.
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`documentation does not corroborate an inventor’s testimony about inventive
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`facts.”); see Exhibit 2001, ¶¶ 9-13; POR, 20-23, 26-27, 31-32. Additionally,
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`Patent Owner cannot rely on Dr. Tilseth’s current interpretation of his notes
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`(Exhibit 2010/2011) to demonstrate an actual reduction to practice that satisfied the
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`‘169 patent’s intended purpose. Exhibit 2001, ¶¶ 12, 15 (“the extracted oil was
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`suitable for both encapsulation and for further processing”); see In re Garner, 508
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`F.3d 1376, 1380 (Fed. Cir. 2007) (“necessary to corroborate that device worked for
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`its intended purpose”). First, Dr. Tilseth’s notes cannot corroborate his reduction
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`to practice story. Second, these notes do not describe Dr. Tilseth’s expectations,
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`but those of a third party who believed that “special capsules” could possibly be
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`“designed” to encapsulate krill oil. Exhibit 2011, p. 0003. That future possibility,
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`however, demonstrates the intended purpose of the ‘169 patent was not satisfied.
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`Newkirk v. Lulejian, 825 F.2d 1581, 1583 (Fed. Cir. 1987) (reduction to practice
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`requires “more than theoretical capability”); Cooper v. Goldfarb, 154 F.3d 1321,
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`1324 (Fed. Cir. 1998) (“inventor must contemporaneously appreciate that the
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`embodiment worked [and] met all the limitations”).
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`14
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`Finally, inconsistencies in what is actually reported in Exhibits 2011
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`and 2013 further highlight Patent Owner’s inadequate proofs.
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`starting
`material
`yield
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`extract
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`conditions
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`Exhibit 2011, p. 0002
`“3150 kg krill flour”
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`Exhibit 2013, p. 0005
`“3200 kg krill meal”
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`“approximately 500
`kg of phospholipids”
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`“not viscous”
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`“lasted for (2) hours
`and was run at room
`temperature”
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`“660 kg of crude
`lipids”
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`“high viscosity”
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`“time and
`temperature . . . was
`unknown”
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`C.
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`Stempel Cannot Cure Patent Owner’s
`Lack Of Corroboration
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`To obscure the absence of sufficient corroboration, Patent Owner relies on
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`
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`the In re Stempel, 241 F.2d 755 (CCPA 1957). Although distinguished and
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`rejected, Patent Owner mischaracterizes Stempel as “controlling authority,” and
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`erroneously contends this 1957 decision excuses Patent Owner’s failure to
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`corroborate the reduction to practice of each element of the claims of the ‘169
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`patent. POR, 19. Patent Owner’s reliance on Stempel is inapt.
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`15
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`First, the Federal Circuit has held a reduction to practice must meet all claim
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`limitations:
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` When the issue of priority concerns the antedating of a
`reference, the applicant is required to demonstrate . . .
`that the applicant was in possession of the later-claimed
`invention before the effective date of the reference.
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`In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphasis added).
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`Second, Stempel simply held that a reference may be overcome as to a
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`generic claim by showing priority to the species disclosed in the prior art reference.
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`241 F.2d at 758-59. Petitioner, however, has not alleged Breivik II anticipates the
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`challenged claims, nor argued Breivik II recites a species of a claimed genus.
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`Patent Owner’s interpretation of Stempel was also expressly rejected in In re
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`Tanczyn:
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` [W]e never intended by the language used in Stempel
`to authorize the overcoming of references by affidavits
`showing that the applicant had invented, prior to the
`reference date, a part, some parts or even a combination
`of parts, used to create an embodiment of his claimed
`invention.
`146 USPQ 298, 301 (CCPA 1965).
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`16
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`Stempel does not excuse Patent Owner’s failure to corroborate Dr. Tilseth’s
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`reduction to practice testimony.9
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`Finally, the chart comparing the ‘169 patent claims to Dr. Tilseth’s reduction
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`to practice story and Breivik II is mere chaff that fails to remedy the fatal
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`omissions in Patent Owner’s proofs. POR, 24-35. For example, the chart
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`maintains Sections 6.1-6.2 (Exhibit 2003, pp. 0022-24) discloses that krill was
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`“cooked” and lipases and phospholipases were denatured. See, e.g., POR, 25-26,
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`30-31. However, Sections 6.1-6.2 do not describe, inter alia, cooking, heating,
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`9 Patent Owner’s reliance on Pfizer is unavailing. POR, 19. In Pfizer, Petitioner
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`argued the claims should be construed to require “reduced immunogenicity” which
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`Patent Owner needed to establish through evidence of “immunogenicity testing.”
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`The Board rejected that argument, but noted alternatively that the prior art did not
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`provide any evidence of immunogenicity testing, and that “Patent Owner has
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`antedated as much of the claimed invention as shown in the references.” IPR
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`2017-01488 (Paper 87), 24. In contrast, a denatured krill product is a limitation of
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`the claims of the ‘169 patent.
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`17
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`denaturing lipases and phospholipases or forming a denatured krill product, and no
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`independent corroboration was proffered supporting those assertions. Supra, 9-10.
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`Additionally, the chart avers that Dr. Tilseth’s notes, Exhibit 2011, demonstrate the
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`encapsulation of denatured krill. POR, 29, 34. However, Patent Owner failed to
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`independently corroborate Dr. Tilseth’s claim of extraction or encapsulation.
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`Supra, 13-14. Further, any inferences Patent Owner tries to draw from the chart’s
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`comparison of Dr. Tilseth’s purported reduction to practice and Breivik II’s
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`disclosure are a nullity based on Tanczyn.
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`Patent Owner has failed to antedate Breivik II.
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`V. CLAIMS 1-20 WOULD HAVE BEEN OBVIOUS
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`A.
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`Patent Owner’s Piece-Meal Prior Art Attack Is Improper
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`Ignoring that Petitioner’s unpatentability arguments are based on
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`obviousness, not anticipation, Patent Owner separately dissects Breivik II,
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`Catchpole, Fricke and Budziński to conclude “none” teach the “extraction of oil
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`from a krill meal that has been stored far from 1 to 24 months.” POR, 36. Patent
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`Owner’s piece-meal attack of the prior art rigidly focuses on “the disclosures of
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`individual references” without considering the combined teachings of those
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`references and a POSITA’s “creativity [ ] and common sense.” Randall Mfg; v.
`18
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`Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see Software Rights Archive, LLC v.
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`U.S. Patent No. 9,644,169
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`Facebook, Inc., 659 F. App’x 627, 637 (Fed. Cir. 2016) (“[i]n assessing
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`obviousness, references are not read in isolation”). Nonetheless, Patent Owner’s
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`critique of each reference is telling; not for what each reference purportedly does
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`not expressly describe, but rather for what Patent Owner implicitly concedes each
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`reference discloses.
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`Addressing Patent Owner’s critique of Breivik II, it cannot be disputed that
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`Breivik II expressly teaches that krill should be denatured, discloses solvent
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`extraction and describes encapsulated krill oil. See, e.g., Exhibit 1037, p. 0010,
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`lines 11-12; p. 0009, lines 14-18; p. 0011, lines 23-36; Tallon Reply, ¶¶ 76-79; see
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`(Exhibit 1012) Sampalis, p. 0004. Instead, Patent Owner urges Breivik II
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`“specifically teaches that fresh krill should be used in its processes and that the
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`denaturation . . . take place immediately before extraction.” POR, 37. However,
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`Breivik II states that its processes are applicable to both krill and krill body parts,
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`and defines “krill” as including “krill meal.” Exhibit 1037, p. 0002, lines 11-12; p.
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`0006, line 28; Tallon Reply, ¶¶ 70, 119-121. Importantly, the Board found Breivik
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`II discloses “providing a denatured krill product and extracting polar krill oil from
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`that product using a polar solvent.” Exhibit 1157 (IPR2018-01178), 28.
`19
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`Additionally, Breivik II does not require denaturation “immediately” before
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`solvent extraction. Instead, this “immediate” processing relates to the recognized
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`need to promptly denature krill to prevent hydrolysis of krill lipids. See, e.g.,
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`Exhibit 1037, 10:11-12; Tallon Reply, ¶¶ 71-75. This initial denaturing step does
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`not require immediate extraction. Tallon Reply, ¶ 72-73.
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`Despite Patent Owner’s assertions, POR, 37-38, Example 18 of Catchpole
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`expressly describes krill oil extract with at least 4.8% ether phospholipids. Exhibit
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`1104 (IPR 2017-00746), 30-32; see Tallon Decl., ¶¶ 190-196.
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`Turning to Fricke, it cannot be disputed that Fricke describes cooking krill to
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`obtain denatured product that was stored for some months, and that the resulting
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`extract possessed 1-3% free fatty acids. Exhibit 1010, pp. 0001-0003; Tallon
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`Decl., ¶¶ 303-309; Tallon Reply, ¶¶ 68, 105. Instead, Patent Owner complains
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`Fricke has “no teaching as to the storage time” and does not indicate “how the
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`cooked krill was extracted” POR, 38. However, Fricke’s method to extract the
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`analyzed samples was described under “Materials and Methods.” Exhibit 1010, p.
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`0001; Tallon Decl., ¶ 306; Tallon Reply, ¶¶ 58-62, 67. Additionally, crediting the
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`testimony of Dr. Tallon, the Board found Fricke discloses denaturation of lipases
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`and phospholipases. Exhibit 1104 (IPR2017-00746), 28-29. The Bo
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