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`Paper 21
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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 RESPONSE TO PATENT OWNER’S SUBMISSION
`ADDRESSING PURPORTED IMPROPER EVIDENCE AND
`ARGUMENT IN PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
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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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`In addition to Budziński’s (Exhibit 1008) disclosure that denatured krill is
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`“stable” and can be stored for at least 13 months, Petitioner noted that Fricke
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`(Exhibit 1010) also satisfied the 1-24 month storage period limitation of the ‘169
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`patent. See, e.g., Petition (Paper 2), 45, 51, 60; Tallon Decl. (Exhibit 1006), ¶¶
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`308-312. Patent Owner in its Response disputed that fact, and argued there was no
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`teaching in Fricke relating to the period of time denatured krill was stored:
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`“Fricke contains no teaching as to the storage time for the
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`cooked krill . . . .” POR (Paper 9), 38.
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`“Fricke contains no details on storage time of its cooked krill
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`. . . .” Id., 39.
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`Directly rebutting Patent Owner’s argument, Petitioner explained in its
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`Reply that the denatured krill material described in Fricke was stored “some
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`months” before solvent extraction. Pet. Reply (Paper 15), 20-21. As support,
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`Petitioner relied on the testimony of its expert, Dr. Tallon, that Fricke “directly
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`describes storage of the denatured [krill] material for a period of at least some
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`months [and] extraction of a krill oil from the denatured and stored material.” See,
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`e.g., Exhibit 1086, ¶¶ 68, 105. Confirming Dr. Tallon’s testimony regarding
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`Fricke, and further rebutting Patent Owner’s argument, Petitioner also relied on the
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`Board’s finding in a related proceeding involving a patent in the same family as the
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`Inter Partes Review Case No.: IPR2020-01532
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`challenged ‘169 patent. In that proceeding, based on the disclosure of a different
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`U.S. Patent No. 9,644,169
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`Fricke publication (Exhibit 2006), the Board found the denatured krill described in
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`Fricke (Exhibit 1010) was stored “some months” prior to extraction. IPR 2017-
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`00746, Final Written Decision (Paper 23) Exhibit 1104, 21-22; see Tallon Reply
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`(Exhibit 1086), ¶¶ 62-65, 68, 105.1
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`Petitioner’s argument and supporting evidence that Fricke teaches and
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`discloses denatured krill meal was stored “some months” prior to solvent
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`extraction directly responded to the argument made in Patent Owner’s Response
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`and constituted proper rebuttal evidence. In fact, the Federal Circuit has ruled:
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`if the petition asserts that a claim requirement is met, provides a
`reason that the assertion is true, and cites evidentiary support for
`that reason, then reply material that fairly adds confirmation that
`the initially presented material does in fact support the assertion
`is not prohibited new material but a proper part of the record.
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`AMC Multi-Cinema, Inc. v. Fall Line Patents, No. 2021-1051, 2021 U.S. App.
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`LEXIS 29547, at * 18 (Fed. Cir. Sept. 30, 2021); see, e.g., Genzyme Therapeutics
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`Prods. L.P. v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016).
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`1 In this proceeding Exhibit 2006 has been marked Exhibit 1160.
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`2
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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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`Consequently, the two sentences in Petitioner’s Reply that Patent Owner
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`complains about directly responded to an argument made in Patent Owner’s
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`Response, and is proper rebuttal evidence under 37 C.F.R. § 42.23(b).
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`Patent Owner also takes issue with Petitioner’s reliance on one or more
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`alternative references for every limitation Breivik II is cited. However, each
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`alternative reference is clearly denoted in the Petition by the term “OR” after the
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`citation to Breivik II. See, e.g., Petition (Paper 1), 69-89. For example, Petitioner
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`relies on Breivik II “OR” Fricke to satisfy the “providing krill” limitation of claim
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`1. Id., 71. In fact, in instituting review of the ‘169 patent, the Board recognized
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`Petitioner’s reliance on alternative references. See, e.g., Decision (Paper 6), 12-13
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`(“Breivik II and Fricke disclose ‘providing krill,’ as recited in claim 1(a).”
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`Dated: November 16, 2021
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`Respectfully submitted,
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`/james f. harrington/
`James F. Harrington
`jfhdocket@hbiplaw.com
`Registration No. 44,741
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`HOFFMANN & BARON, LLP
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`Attorney for Petitioner
`Rimfrost AS
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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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`CERTIFICATE OF SERVICE
`I hereby certify that on this 16th day of November, 2021, PETITIONER’S
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`RESPONSE TO PATENT OWNER’S SUBMISSION ADDRESSING
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`PURPORTED IMPROPER EVIDENCE AND ARGUMENT IN
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE was served in
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`their entirety on the following counsel of record by e-mail at the address provided
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`in the PO Mandatory Notice Information as set forth below:
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`David A. Casimir, Ph.D.
`J. Mitchell Jones, Ph.D.
`CASIMIR JONES S.C.
`2275 Deming Way, Suite 310
`Middleton, WI 53562
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`dacasimir@casimirjones.com
`jmjones@casimirjones.com
`docketing@casimirjones.com
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`2294770.1
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`By:
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`/james f. harrington/
`James F. Harrington
`jfhdocket@hbiplaw.com
`Registration No. 44,741
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`HOFFMANN & BARON, LLP
`6900 Jericho Turnpike
`Syosset, New York 11791
`(516) 822-3550
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