`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`RIMFROST AS
`
`Petitioner
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`
`Patent Owner
`
`_______________________
`
`Case: IPR2020-01532
`
`U.S. Patent No. 9,644,169 B2
`
`_______________________
`
`
`
`DECLARATION OF DR STEPHEN J. TALLON
`
`
`
`
`
`RIMFROST EXHIBIT 1006 Page 0001
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS ........................................................................................... 2
`
`AGREEMENT TO PROVIDE EXPERT TESTIMONY .......................................... 9
`
`BASES FOR OPINIONS GIVEN ...........................................................................11
`
`NO FINANCIAL INTEREST IN PROCEEDING ..................................................11
`
`QUALIFICATIONS AND RELEVANT EXPERIENCE .......................................11
`
`RELEVANT CONSIDERATIONS .........................................................................18
`
`PRIORITY CLAIMS ...............................................................................................22
`
`CHART I - FAMILY CHART ............................................................................23
`
`Earlier PTAB Decisions Expressly Addressed All But Two Claim Limitations.
`
` ..............................................................................................................................24
`
`LEVEL OF ORDINARY SKILL IN THE ART & THE POSITA .........................26
`
`THE ‘169 PATENT (EX1001) ................................................................................27
`
`Krill Processing and Denaturation .......................................................................27
`
`Extraction of Krill Components and Combining Krill Extracts ..........................29
`
`
`
`
`2
`
`RIMFROST EXHIBIT 1006 Page 0002
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`Ether Phospholipids – Prior Art Krill Bill NKO Ether PL Content Greater than
`
`3% ........................................................................................................................30
`
`Examples 7 and 8 do not rely on the source or processing of the krill in the
`
`extraction of krill oil. ...........................................................................................32
`
`The ‘169 Patent Claims Summary. ......................................................................32
`
`THE ‘169 PATENT IS ENTITLED TO A PRIORITY ..........................................36
`
`MOTIVATION TO COMBINE - OVERVIEW .....................................................37
`
`CHART II - SEVERAL KRILL COMPONENTS KNOWN TO A POSITA ....48
`
`COMPARED WITH ‘169 PATENT EXAMPLE 7* ..........................................48
`
`CLAIM TERMS ......................................................................................................53
`
`ITC Claim Construction. ......................................................................................53
`
`“krill oil” means “lipids extracted from krill” .....................................................57
`
`“astaxanthin” means “the astaxanthin molecule having the structure shown
`
`below and includes both cis- and trans forms of the molecule: ...........................63
`
`“astaxanthin esters” means “astaxanthin molecules in which one or both of the
`
`hydroxyl groups are replaced by a fatty acid tail connected to the astaxanthin
`
`molecule through an ester bond.” ........................................................................68
`
`
`
`
`3
`
`RIMFROST EXHIBIT 1006 Page 0003
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`“about” extends the number it modifies to include the range provided by
`
`rounding, and means “a range about the number it modifies which when rounded
`
`provides the number it modifies” .........................................................................69
`
`“to denature lipases and phospholipases” means “to alter the conformational
`
`structure of lipases and phospholipases to reduce lipid and phospholipid
`
`decomposition” ....................................................................................................71
`
`“freshly harvested krill” means “recently caught krill that has not significantly
`
`degraded” .............................................................................................................75
`
`“polar solvent” means “solvent or mixtures of solvents capable of extracting
`
`polar lipids comprising phospholipids” ...............................................................77
`
`“krill meal” means “processed krill, with reduced water content, from which
`
`krill oil can be extracted.” ....................................................................................80
`
`PRIOR ART .............................................................................................................91
`
`Budziński (EX1008) ............................................................................................91
`
`Catchpole (EX1009) ..........................................................................................100
`
`Randolph (EX1011) ...........................................................................................114
`
`Sampalis I (EX1012) ..........................................................................................120
`
`Sampalis II (EX1013) ........................................................................................124
`4
`
`RIMFROST EXHIBIT 1006 Page 0004
`
`
`
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`Breivik I (EX1035), Breivik II (EX1037) and Breivik III (EX1036) ...............134
`
`Bunea (EX1020) ................................................................................................152
`
`Bottino I (EX1007) ............................................................................................155
`
`Bottino II (EX1038) ...........................................................................................158
`
`Yoshitomi (EX1033) ..........................................................................................163
`
`Fricke (EX1010) ................................................................................................171
`
`Fricke discloses cooking of fresh krill to denature enzymes. ........................173
`
`Fricke discloses storage of krill, including freshly cooked krill, followed by
`
`extraction of krill oil. .....................................................................................175
`
`Fricke discloses sterol, including cholesterol, content in krill oil. ................176
`
`Fricke 1984 analysis of omega-3 fatty acids .................................................184
`
`Enzymotec (EX1048, GRAS Notice No. GRN 000226) ...................................189
`
`Tanaka (EX1015) ...............................................................................................200
`
`Grantham (EX1032) ...........................................................................................204
`
`Grynbaum (EX1039) .........................................................................................215
`
`Mayzaud (EX1084) ............................................................................................223
`
`Neptune Krill Oil (NKO) and Krill Bill NKO (EX1070, et. al) ........................225
`
`
`
`
`5
`
`RIMFROST EXHIBIT 1006 Page 0005
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`Britton (EX1097) – trans (all-E) form of astaxanthin predominates in nature .230
`
`Yuan (EX1098) ..................................................................................................233
`
`Foss (EX1102) ...................................................................................................235
`
`Higuera-Ciapara (EX1100) ................................................................................237
`
`Lambertsen (EX1101) ........................................................................................241
`
`Tehoharides (EX1030) .......................................................................................242
`
`Hoem Presentation (EX1080) ............................................................................243
`
`THE ‘169 PATENT CLAIM CHART ...................................................................247
`
`‘169 PETITION GROUNDS ...............................................................................248
`
`GROUND 1 ............................................................................................................249
`
`BREIVIK II, CATCHPOLE, .................................................................................249
`
`BUDZIŃSKI, FRICKE, RANDOLPH ..................................................................249
`
`CLAIMS 1-5, 7-15, 17-20 .....................................................................................249
`
`Claims 1, 2, 12 and 15. ......................................................................................249
`
`Providing/Obtaining a Denatured Krill Product from Freshly Harvested Krill.
`
` ........................................................................................................................251
`
`Storing the Denatured Krill Product Before Extracting Krill Oil ..................252
`
`
`
`
`6
`
`RIMFROST EXHIBIT 1006 Page 0006
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`Extracting Krill Oil from Stored Denatured Krill with a Polar Solvent ........254
`
`Krill Oil with from about 3% to about 15% Ether Phospholipids. ................255
`
`Astaxanthin Esters in Amount of greater than about 100 mg/kg Krill Oil. ...255
`
`Claim 2. ..............................................................................................................257
`
`Claims 3 and 13..................................................................................................258
`
`Claim 4 and 14. ..................................................................................................259
`
`Claims 5 and 15..................................................................................................261
`
`Claims 7, 8, 17 and 18. ......................................................................................262
`
`Claims 9 and 19..................................................................................................264
`
`Claims 10 and 20................................................................................................266
`
`Claim 11. ............................................................................................................267
`
`Ground 1 Motivation and Claims 1-5, 7-15, 17-20 are Obvious. ......................269
`
`GROUND 2 ............................................................................................................273
`
`BREIVIK II, CATCHPOLE, .................................................................................273
`
`BUDZIŃSKI, FRICKE, .........................................................................................273
`
`RANDOLPH, SAMPALIS I ..................................................................................273
`
`CLAIMS 6, 16 ........................................................................................................273
`7
`
`
`
`
`RIMFROST EXHIBIT 1006 Page 0007
`
`
`
`IPR2020-01532
`
`U.S. Patent No. 9,644,169 B2
`
`Ground 2 Motivation and Claims 6 and 16 are Obvious. ..................................274
`
`CONCLUDING OPINION ....................................................................................276
`
`APPENDIX A ........................................................................................................277
`
`‘169 PATENT INVALDITY GROUNDS ............................................................277
`
`‘169 PATENT CLAIM CHART ...........................................................................278
`
`APPENDIX B ................................................................................................... 294
`
`APPENDIX C ................................................................................................... 298
`
`APPENDIX D ........................................................................................................300
`
`APPENDIX E ........................................................................................................309
`
`APPENDIX F .........................................................................................................316
`
`8
`
`RIMFROST EXHIBIT 1006 Page 0008
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`
`
`
`I, Dr Stephen J. Tallon, do hereby make the following declaration:
`AGREEMENT TO PROVIDE EXPERT TESTIMONY
`
`1.
`
`I have agreed to provide expert testimony in support of Rimfrost AS’s
`
`Petition for Inter Partes Review of U.S. Patent No. 9,644,169 B2. My Curriculum
`
`Vitae is attached hereto as Appendix C.
`
`2.
`
`I understand that this proceeding involves U.S. Patent No. 9,644,169 B2
`
`(“the ‘169 Patent”) entitled “Bioeffective Krill Oil Compositions,” (EX1001).
`
`3.
`
`I was asked to review and did review the chain of provisional applications
`
`referred to in the ‘169 Patent (Exhibits 1002-1005) for disclosures relating to ether
`
`phospholipids (ether PL), a material requirement of all the claims. I have reviewed
`
`each of the Provisional Applications, Exhibits 1002-1005, to determine which if
`
`any provide written support for any of the claim limitations (elements) of the ‘169
`
`Patent which claim any of the various percentages of ether phospholipids by
`
`weight of krill oil. Only one of the Provisional Applications disclose ether
`
`phospholipids. In my opinion, none of the ‘446, ‘058 and ‘483 Provisional
`
`Applications (Exhibits 1003-1005) mention the term ether phospholipid or
`
`otherwise discuss or disclose the presence of ether phospholipids. In my opinion,
`
`as discussed below, only the ‘072 Application provides any written description
`
`regarding any percentage of ether phospholipids by weight of krill oil. The other
`9
`
`
`
`
`RIMFROST EXHIBIT 1006 Page 0009
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`Provisional Applications, Exhibits 1003-1005, do not disclose or reference the
`
`existence of ether phospholipids.
`
`4.
`
`I have been asked to provide my opinion regarding whether one of ordinary
`
`skill in the art at the relevant time would have understood that certain prior art
`
`references, alone or in combination, disclose or teach each of the elements and
`
`limitations recited in the claims of the ‘169 Patent. I have also been asked to
`
`provide my opinion regarding whether a person of ordinary skill in the art (a
`
`“POSITA”) would have been motivated or had a rationale or reason to modify or
`
`combine those certain prior art references to arrive at the elements recited in the
`
`claims of the ‘169 Patent. In my opinion, as discussed below, the references
`
`discussed below disclose or teach each of the elements and limitations recited in
`
`the claims of the ‘169 Patent and a POSITA would have had a strong rationale and
`
`motivation to combine them and would have done so without undue
`
`experimentation and with a reasonable expectation of success.
`
`
`
`
`
`
`
`
`10
`
`RIMFROST EXHIBIT 1006 Page 0010
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`BASES FOR OPINIONS GIVEN
`
`5.
`
`In forming my opinion, I have relied on my own education, work
`
`experiences and knowledge and my review of the documents described herein and
`
`listed in Appendix E, attached hereto.
`
`NO FINANCIAL INTEREST IN PROCEEDING
`
`6.
`
`For my work related to this Inter Partes Review, my employer, Callaghan
`
`Innovation, receives compensation for my time. I am not directly compensated by
`
`either Hoffmann and Baron, LLP or the Petitioner. I have no financial interest in
`
`this proceeding, and the potential for any future financial benefit is unaffected by
`
`the content of my testimony or the outcome of this proceeding. My compensation
`
`from my employer, Callaghan Innovation, is not in any way related to the outcome
`
`of the case.
`
`QUALIFICATIONS AND RELEVANT EXPERIENCE
`
`7.
`
`I am currently employed as Team Manager of the Processing Team within
`
`the Integrated Bioactive Technologies Group of Callaghan Innovation, at the
`
`Gracefield Research Centre in Lower Hutt, New Zealand (an agency of the
`
`Government of New Zealand). The Integrated Bioactive Technologies group
`
`specializes in near to market research and development in the field of processing of
`
`
`
`
`11
`
`RIMFROST EXHIBIT 1006 Page 0011
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`biologically-derived raw materials to make high value nutraceuticals, food
`
`ingredients and biopharmaceuticals. My research and expertise has helped to
`
`enable a number of industries in New Zealand to make such products, including a
`
`range of plant and marine derived extracts, including lipid extracts that are
`
`produced using a supercritical fluid extraction process.
`
`8.
`
`Consequently, I have knowledge and expertise regarding methods of making
`
`or extracting oils from crustaceans such as krill, including neutral and polar lipids,
`
`and of their composition, including various extraction methods involving the use of
`
`liquid and supercritical fluids, with and without polar co-solvents; and the polar
`
`solvent extraction of marine biomasses to achieve the same aims. These
`
`processing methods are now and were to a POSITA (see POSITA discussion
`
`below) a matter of public knowledge. My CV is attached as Appendix C.
`
`9.
`
`I began developing supercritical CO2 + polar co-solvent extraction and
`
`fractionation processes around 2003 with my colleague Dr Catchpole, and applied
`
`them to biomasses containing phospholipids around 2004, and in particular to
`
`marine and dairy biomasses. Around this time, I also investigated the use of
`
`dimethyl ether (DME) for extracting phospholipids, again mainly from marine and
`
`dairy biomasses.
`
`
`
`
`12
`
`RIMFROST EXHIBIT 1006 Page 0012
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`10. Around this time, 2003-2004, Dr Andrew Mackenzie, also part of the
`
`Integrated Bioactive Technologies group, developed an NMR-based method for
`
`analyzing and quantifying phospholipids, based on the 31P isotope. This analysis
`
`method was able to distinguish between very closely related phospholipids, such as
`
`phosphatidylcholine (PC) and its ether-lipid analogue
`
`alkylacylphosphatidylcholine (AAPC); and phosphatidylethanolamine (PE) and its
`
`ether analogues phosphatidylethanolamine plasmalogen and
`
`alkylacylphosphatidylethanolamine (AAPE).
`
`11. Prior to the use of 31P NMR to determine the ether phospholipid content of
`
`phospholipid lipids, and though other methods for analyzing same were available,
`
`it was common industry practice to report only the total phospholipid content for
`
`the phosphatidylcholine (PC) and phosphatidylethanolamine (PE) lipid
`
`components. Thus, when the amount of the PC lipid component was reported, the
`
`number reported included not only PC, but its ether-lipid analogue
`
`alkylacylphosphatidylcholine (AAPC). The total then reported being the sum of the
`
`non-ether phospholipids and ether phospholipids. In a like manner, when the
`
`amount of the phosphatidylethanolamine (PE) component was reported, the
`
`number reported included not only PE, but its ether analogues
`
`
`
`
`13
`
`RIMFROST EXHIBIT 1006 Page 0013
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`phosphatidylethanolamine plasmalogen (PE plasmalogen) and
`
`alkylacylphosphatidylethanolamine (AAPE) as well.
`
`12. When the industry began to accept the 31P NMR standard for the first time
`
`the ether-phospholipid components started to be consistently reported as separate
`
`constituents.
`
`13.
`
`In 2006 the Integrated Bioactive Technologies group of Callaghan
`
`Innovation (of which I am a part), began to work collaboratively with Nutrizeal
`
`Ltd (founded 1995), now operating as Pharmalink Extracts, Ltd. (Nelson, New
`
`Zealand) on the extraction of dry krill powder to produce krill lipid extracts
`
`enriched in phospholipids, and to provide a detailed compositional analysis of
`
`those natural extracts.
`
`14. The work of the Integrated Bioactive Technologies group on the extraction
`
`of phospholipids using CO2 and CO2+ polar co-solvent led us to discover that we
`
`could separate different types of phospholipids based on their solubility. Work was
`
`performed on a variety of biomasses including krill, which demonstrated that a
`
`phospholipid-rich extract containing both ether and non-ether phospholipids was
`
`obtained. This work is described in WO 2007/123424, published November 2007,
`
`based on International Application Number PCT/NZ/2007/000087, Catchpole and
`
`
`
`
`14
`
`RIMFROST EXHIBIT 1006 Page 0014
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`Tallon, International Filing Date April 20, 2007 (Catchpole, Example 18 and Table
`
`16, p. 24, EX1009, p. 0024).
`
`15. The 31P-NMR analysis method used in Catchpole (pp. 14 & 24, EX1009, pp.
`
`0014 & 0024) demonstrated that ether phospholipids were an intrinsic constituent
`
`of the lipid composition of many marine organisms, including krill and krill meal
`
`and provided a direct determination of the amounts of ether phospholipids present.
`
`16. We also performed lipid analysis work on existing commercial krill lipid
`
`products that were supplied to us by Nutrizeal in 2006. Upon information and
`
`belief, these products were Neptune Krill Oil (NKO), a.k.a. “Krill Bill”, with the
`
`krill oil in the form of gelatine capsules as taken from a Krill Bill bottle shown
`
`below (see EX1069); and Aquasource Krill Oil (Antarctica Select), again with the
`
`krill oil in the form of gelatine capsules (see EX1071 for 2006 online Aquasource
`
`Antarctica Krill Oil disclosures). In 2006, the product specification for Krill Bill
`
`krill oil disclosed that the krill oil contained greater than 40% phospholipids and
`
`greater than 1500 mg/kg astaxanthin esters. See EX1070 (see EX1076 from
`
`Internet Archive regarding contents of EX1070 and EX1071).
`
`17. The encapsulated krill oils were analyzed and found to contain, among the
`
`phospholipids, both non-ether phospholipids and ether phospholipids, and high
`
`levels of omega-3 fatty acids (polyunsaturated fatty acids which have an
`
`
`
`
`15
`
`RIMFROST EXHIBIT 1006 Page 0015
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`unsaturated bond at the third carbon from the terminal end, commonly reported as
`
`ω-3, n-3, or omega-3) including eicosapentaenoic acid (EPA) and docosahexaenoic
`
`acid (DHA) attached to the phospholipids.
`
`18.
`
`Individuals from Industrial Research Limited, New Zealand (IRL, now
`
`known as Callaghan Innovation, New Zealand), developed methods of extracting
`
`krill oil from krill and analyzing the resulting krill oil product during the period of
`
`at least 2003-2006. The extraction methods used involved CO2 extraction with and
`
`without a polar entrainer. These extraction and analysis methods were later used in
`
`performing work for a third party. The work included the results reported in the
`
`‘169 Patent in Tables 22 and 23, and in the text of the patent (see, e.g., ‘169 Patent,
`
`Example 8, 32:60-33:47, EX1001, pp. 0041-0042), pertaining to, among other
`
`things, the ether phospholipids in krill oil extracts, and providing the only support
`
`for ether phospholipids in the ‘169 Patent. Additional results are reported in the
`
`‘072 Provisional Application. See, e.g., ‘072 Provisional Application, pp. 44-52,
`
`EX1002, pp. 0047-0055.
`
`19. The ‘169 Patent does not identify individuals at IRL who conceived and
`
`developed this work as inventors of the ‘169 Patent, even though all the claims
`
`require that the krill oil compositions have an ether phospholipid component, a
`
`component whose presence the applicants for the ‘169 Patent argued, in the patent
`
`
`
`
`16
`
`RIMFROST EXHIBIT 1006 Page 0016
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`application for the related patent U.S. 9,644,170 (‘170 Patent, EX1093,
`
`distinguished it from the prior art NKO krill oil product.1 The relationship
`
`between the ‘170 Patent and the ‘169 Patent is diagrammed in Chart I below. The
`
`‘170 Patent and the ‘169 Patent are continuations of the U.S. Patent No. 9,375,453
`
`B2 (the ‘453 Patent, EX1067).
`
`20. By 2006 and even before, EPA, DHA and phospholipids were associated
`
`with beneficial health and were recognized to be important compounds for use in
`
`the nutraceutical industry and they remain so today. See, e.g., Aquasource
`
`Antarctica Select Krill Oil published literature from 2006 shown in EX1071.
`
`21. Since 2006 I have continued to work with, among other things, krill and krill
`
`oils, including analysis of the components, development of extraction processes for
`
`further fractionation of the components, and product concepts thereof.
`
`
`
`
`
`
`
`
`1 See “Response to Office Action”, October 12, 2016, ‘170 Patent File History,
`
`Exhibit 1063, pp. 0438-0447, see p. 0446. See also, “Applicant-Initiated Interview
`
`Summary”, October 20, 2016, ‘170 Patent File History, Exhibit 1063, pp. 0582-
`
`0584.
`
`
`
`
`17
`
`RIMFROST EXHIBIT 1006 Page 0017
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`RELEVANT CONSIDERATIONS
`
`22.
`
`23.
`
`I provide my opinions in this declaration as informed below.
`
`I have been informed that to be entitled to an earlier priority date each claim
`
`limitation must be expressly, implicitly, or inherently supported in the originally
`
`filed disclosure, in this case in the Provisional Applications Exhibits 1002-1005.
`
`24.
`
`I have been informed that to benefit from a claim of priority to an originally
`
`filed disclosure, the originally filed disclosure must contain a written description of
`
`the invention as claimed in the later application (the ‘169 Patent), and of the
`
`manner and process of making and using it, in such full, clear, concise, and exact
`
`terms as to enable any person of ordinary skill in the art to make and use the
`
`invention as claimed. I have been informed that to meet this requirement, the
`
`originally filed disclosure must reasonably convey to one of skill in the art that the
`
`inventor possessed the later-claimed subject matter at the time the parent
`
`application was filed. I have been further informed, a disclosure in a parent
`
`application (the originally filed disclosure) that merely renders the later-claimed
`
`invention obvious is not sufficient to meet the written description requirement; the
`
`disclosure itself must describe the claimed invention with all its limitations.
`
`25.
`
`I have been further informed that to determine if the later application, that is,
`
`the ‘169 Patent, is to receive the benefit of an earlier filed application or patent is
`
`
`
`
`18
`
`RIMFROST EXHIBIT 1006 Page 0018
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`whether a person of ordinary skill in the art would recognize that the applicant
`
`possessed what is claimed in the later filed application as of the filing date of the
`
`earlier filed application or patent. The disclosure as originally filed in the earlier
`
`applications or patent must convey with reasonable clarity to those skilled in the art
`
`that the inventor was in possession of the invention. That is, one skilled in the art,
`
`reading the original disclosure, must immediately discern the limitation at issue in
`
`the claims.
`
`26.
`
`I have been informed that these requirements for written support, possession
`
`of the invention and enablement, are referred to as § 112(a) requirements. I have
`
`further been informed that if a patent’s claims do not have § 112(a) support, it is
`
`unpatentable and invalid.
`
`27.
`
`I have been informed that a claimed invention is unpatentable if the
`
`differences between the invention and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the alleged invention was made to
`
`a person having ordinary skill in the art to which the subject matter pertains. I
`
`have also been informed that an obviousness analysis takes into account factual
`
`inquiries including the level of a person of ordinary skill in the art, the scope and
`
`content of the prior art, and the differences between the prior art and the claimed
`
`subject matter.
`
`
`
`
`19
`
`RIMFROST EXHIBIT 1006 Page 0019
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`28.
`
`I have been informed that there are several accepted rationales for
`
`combining references or modifying a reference to show obviousness of the claimed
`
`subject matter. Some of these rationales include the following: combining prior art
`
`elements according to known methods to yield predictable results; simple
`
`substitution of one known element for another to obtain predictable results; a
`
`predictable use of prior art elements according to their established functions;
`
`applying a known technique to a known device to yield predictable results;
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and some teaching, suggestion, or motivation in
`
`the prior art that would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at the claimed
`
`invention.
`
`29.
`
`I have been informed that “a person of ordinary skill in the art”, a POSITA,
`
`is not a specific, real individual, but rather a hypothetical individual or team of
`
`individuals working closely together, who is presumed to have known the relevant
`
`art at the time of the invention. In defining the POSITA, I have been informed to
`
`consider factors such as the educational level and years of experience not only of
`
`the person or persons who have developed the invention that is the subject of the
`
`case, but also others working in the pertinent art at the time of the invention; the
`
`
`
`
`20
`
`RIMFROST EXHIBIT 1006 Page 0020
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`types of problems encountered in the art; the teachings of the prior art; patents and
`
`publications of other persons or companies; and the sophistication of the
`
`technology.
`
`30.
`
`I have been informed that claim terms are interpreted according to their
`
`broadest reasonable construction in light of the specification of the ‘169 Patent in
`
`which they appear and that the patent claim terms are also given their ordinary and
`
`customary meaning as would be understood by a POSITA in the context of the
`
`entire disclosure.
`
`
`
`
`
`
`
`
`21
`
`RIMFROST EXHIBIT 1006 Page 0021
`
`
`
`IPR2020-01532
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`PRIORITY CLAIMS
`
`31. As I have been informed the ‘169 Patent states that it is a continuation of
`
`application No. 14/020,162 (EX1055), now U.S. Patent No. 9,375,453 (EX1067),
`
`which is a continuation of application No. 12/057,755 (EX1024), now U.S. Patent
`
`No. 9,034,388 B2 (“the ‘388 Patent”, EX1047), which claims the benefit of
`
`expired U.S. Provisional Application No. 60/920,483, filed on March 28, 2007
`
`(“the ‘483 Provisional Application”, EX1005), U.S. Provisional Application No.
`
`60/975,058, filed on September 25, 2007 (“the ‘058 Provisional Application”,
`
`EX1004), U.S. Provisional Application No. 60/983,446, filed on October 29, 2007
`
`(“the ‘446 Provisional Application”, EX1003), and U.S. Provisional Application
`
`No. 61/024,072, filed on January 28, 2008 (“the ‘072 Provisional Application”,
`
`EX1002).
`
`32.
`
`I have been provided with the following Chart I. I note that I have been
`
`involved as an expert on behalf of Petitioner in all of the inter partes reviews
`
`referenced in Chart I.
`
`
`
`
`
`
`
`
`22
`
`RIMFROST EXHIBIT 1006 Page 0022
`
`
`
`
`
`U.S. Patent No. 9,644,169 B2
`
`IPR2020-01532
`
`
`CHART I - FAMILY CHART
`
`
`
`U.S. Provisional
` Patent Application
` No. 60/920,483,
` filed Mar. 28, 2007
` (EX1005)
`
`U.S. Provisional
` Patent Application
` No. 60/975,058,
`filed Sep. 25, 2007
` (EX1004)
`
`U.S. Provisional
` Patent Application
` No. 60/983,446,
`filed Oct. 29, 2007
` (EX1003)
`
`U.S. Provisional Patent
`Appl’n No. 61/024,072,
`filed Jan. 28, 2008
`(EX1002)
`[First mention of ether
`phospholipids]
`
`
`CONTINUATION
`U.S. Patent Application, Ser. No. 12/057,775, filed Mar. 28, 2008 (EX1024),
` U.S. Patent Appl’ Pub. No. , US2008/0274203 A1, published November 6, 2008 (EX1043),
`now U.S. Patent No. 9,034,388, issued May 19, 2015 (EX1047)
`
`
`
`CONTINUATION
`9,078,905
`(EX1116)
`IPR2017-00745
`FWD (EX1103)
`Cancelled
`EX1156
`
`
`CON
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
