Trials@uspto.gov
`571-272-7822
`
`Paper 33
`Date: April 6, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RIMFROST AS,
`Petitioner,
`v.
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`
`IPR2020-01533
`Patent 9,816,046 B2
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 33
`Date: April 6, 2022
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`RIMFROST AS,
`Petitioner,
`v.
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`
`IPR2020-01533
`Patent 9,816,046 B2
`
`
`Before ERICA A. FRANKLIN, JON B. TORNQUIST, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01533
`Patent 9,816,046 B2
`
`I.
`INTRODUCTION
`Background and Summary
`A.
`Rimfrost AS (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–19 of U.S. Patent No. 9,816,046 B2
`(Ex. 1001, “the ’046 patent”). Aker Biomarine Antarctic AS (“Patent
`Owner”) did not file a Preliminary Response to the Petition. Upon review of
`Petitioner’s arguments and evidence, we instituted an inter partes review of
`all claims and grounds asserted in the Petition (Paper 6, “Institution
`Decision” or “Inst. Dec.”).
`
`Patent Owner subsequently filed a Response (Paper 9, “PO Resp.”), to
`which Petitioner filed a Reply (Paper 15, “Pet. Reply”), and Patent Owner
`filed a Sur-Reply (Paper 18, “Sur-Reply”). With authorization, Patent
`Owner also filed a paper identifying arguments and evidence in Petitioner’s
`Reply that it considers to be improper (Paper 19), to which Petitioner filed a
`response (Paper 21).
`
`Petitioner also filed a motion to exclude certain evidence relied upon
`by Patent Owner (Paper 25), to which Patent Owner filed an opposition
`(Paper 26), and Petitioner filed a reply (Paper 28).
`In support of their respective positions, Petitioner relies upon the
`declaration and reply declaration of Dr. Stephen J. Tallon (Exs. 1006, 1086),
`and Patent Owner relies upon the declaration of Dr. Jacek Jaczynski
`(Ex. 2015).
`
`An oral hearing was held on January 12, 2022, and a transcript of the
`hearing is included in the record (Paper 32, “Tr.”).
`
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`Patent 9,816,046 B2
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`Real Parties-in-Interest
`B.
`Petitioner identifies itself, Olympic Holding AS, Emerald
`Fisheries AS, Rimfrost USA, LLC, Rimfrost New Zealand Limited, and
`Bioriginal Food and Science Corp. as real parties-in-interest. Pet. 3. Based
`on various ownership interests, and out of “an abundance of caution,”
`Petitioner also identifies Stig Remøy, SRR Invest AS, Rimfrost Holdings
`AS, and Omega Protein Corporation as real parties-in-interest. Id.
`Patent Owner identifies itself as the real party-in-interest in this
`proceeding. Paper 5, 1.
`
`Related Matters
`C.
`The parties identify as a related matter Aker Biomarine Antarctic AS v.
`Olympic Holding AS, 1:16-CV-00035-LPS-CJB (D. Del.), which involved
`U.S. Patent Nos. 9,028,877 B2 (“the ’877 patent”) and 9,078,905 B2 (“the
`’905 patent”). Pet. 3–4; Paper 5, 1. The parties further identify
`Investigation No. 337-TA-1019 by the United States International Trade
`Commission, which involved the ’877 and ’905 patents, as well as U.S.
`Patent No. 9,320,765 (“the ’765 patent”), U.S. Patent No. 9,375,453 (“the
`’453 patent”), and U.S. Patent No. 9,072,752 (“the ’752 patent”). Pet. 4;
`Paper 5, 1–2.
`The parties also identify the following Board proceedings as related
`matters:
` IPR2017-00745 and IPR2017-00747, which requested review
`of the ’905 patent (all challenged claims found unpatentable
`(Ex. 1103), decision affirmed on appeal (Ex. 1154));
` IPR2017-00746 and IPR2017-00748, which requested review
`of the ’877 patent (all challenged claims found unpatentable
`(Ex. 1104), decision affirmed on appeal (Ex. 1154));
`
`3
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`Patent 9,816,046 B2
` IPR2018-00295, which requested review of the ’765 patent (all
`challenged claims found unpatentable (Ex. 1129));
` PGR2018-00033, which requested review of U.S. Patent
`No. 9,644,170 (institution denied because the challenged patent
`was not eligible for post grant review);
` IPR2018-01178 and IPR2018-01179, which requested review
`of the ’453 patent (all challenged claims found unpatentable
`(Exs. 1157, 1158));
` IPR2018-01730, which requested review of the ’752 patent (all
`challenged claims found unpatentable (Ex. 1159)); and
` IPR2020-01532, which requested review of U.S. Patent No.
`9,644,169 B2 (pending).
`Pet. 4–7; Paper 5, 2–4.
`
`The ’046 Patent
`D.
`The ’046 patent discloses extracts from Antarctic krill that include
`bioactive fatty acids. Ex. 1001, 1:24–25. The ’046 patent explains that krill
`oil compositions, including compositions having up to 60% w/w
`phospholipid content and as much as 35% w/w EPA/DHA1 content, were
`known in the art. Id. at 1:59–62. The ’046 patent further explains that
`“[k]rill oil compositions have been described as being effective for
`decreasing cholesterol, inhibiting platelet adhesion, inhibiting artery plaque
`formation, preventing hypertension, controlling arthritis symptoms,
`preventing skin cancer, enhancing transdermal transport, reducing the
`
`
`1 According to the ’046 patent, “EPA” is 5,8,11,14,17-eicosapentaenoic acid
`and “DHA” is 4,7,10,13,16,19-docosahexanoic acid. Ex. 1001, 9:13–16.
`
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`Patent 9,816,046 B2
`symptoms of premenstrual symptoms or controlling blood glucose levels in
`a patient.” Id. at 1:51–57.
`
`According to the ’046 patent, lipases and phospholipases within krill
`can result in the decomposition of glycerides and phospholipids, such as
`phosphatidylcholine, during transport of frozen krill from the Southern
`Ocean to a processing site. Id. at 2:11–18, 9:61–63. To avoid the problem
`of enzymatic decomposition of krill products, the ’046 patent describes a
`method of thermally denaturing the lipases and phospholipases in fresh-
`caught krill prior to storage and processing. Id. at 9:63–10:11, 10:45–50.
`The ’046 patent reports that these denaturing steps allow for the storage of
`krill material “for from about 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, or 12 months to
`about 24 to 36 months prior to processing.” Id. at 10:36–44.
`The ’046 patent describes an embodiment wherein krill oil is
`subsequently extracted from the stored krill product using a polar solvent
`and/or supercritical carbon dioxide. Id. at 10:2‒4. In Example 7 of the ’046
`patent, “[k]rill lipids were extracted from krill meal (a food grade powder)
`using supercritical fluid extraction with co-solvent.” Id. at 32:15‒16.
`Initially, 300 bar pressure, 333°K and 5% ethanol (ethanol:CO2,
`w/w) were utilized for 60 minutes in order to remove neutral
`lipids and astaxanthin from the krill meal. Next, the ethanol
`content was increased to 23% and the extraction was maintained
`for 3 hours and 40 minutes. The extract was then evaporated
`using a falling film evaporator and the resulting krill oil was
`finally filtered.
`Id. at 32:17‒24.
`In Example 8, krill oil prepared using the same method described in
`Example 7 was analyzed using 31P NMR to identify and quantify the
`phospholipids in the oil. Id. at 32:48‒51. It was determined that “[t]he main
`
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`Patent 9,816,046 B2
`polar ether lipids of the krill meal [were] alkylacylphosphatidylcholine
`(AAPC) at 7-9% of total polar lipids, lyso-alkylacylphosphatidylcholine
`(LAAPC) at 1% of total polar lipids (TPL), and alkylacylphosphatidyl-
`ethanolamine (AAPE) at <1% of TPL.” Id. at 33:13–17.
`E.
`Illustrative Claims
`Petitioner challenges claims 1–19 of the ’046 patent. Claims 1 and 13
`are independent and claims 2–12 depend, directly or indirectly, from claim 1
`and claims 14–19 depend from claim 13. Claims 1 and 13 are illustrative of
`the challenged claims and are reproduced below:
`1. A method of production of krill oil comprising:
`obtaining a krill meal produced by a process comprising
`treating krill to destroy the activity of lipases and phospholipases
`naturally present in krill and wherein said krill meal has been
`stored for period of from 1 to 36 months; and
`extracting krill oil from said krill meal that has been stored
`from 1 to 36 months with a polar solvent to provide a krill oil
`with greater than 30% phosphatidylcholine w/w of said krill oil
`and astaxanthin esters.
`Ex. 1001, 35:48–57.
`13. A method of production of Euphausia superba krill oil
`comprising:
`a) obtaining a Euphausia superba krill meal produced by
`a process comprising treating Euphausia superba to destroy the
`activity of lipases and phospholipases naturally present in
`Euphausia superba and wherein said Euphausia superba krill
`meal has been stored from 1 to 36 months; and
`b) extracting Euphausia superba oil from said krill meal
`that has been stored from 1 to 36 months with a polar solvent to
`provide a Euphausia superba krill oil comprising greater than
`30% phosphatidylcholine w/w of said Euphausia superba krill
`oil, less than 3% free fatty acids w/w of said Euphausia superba
`krill oil, and at least 100 mg/kg astaxanthin esters.
`Id. at 36:42–56.
`
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`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–19 would have been unpatentable on
`the following grounds:
`Claims
`35 U.S.C.
`Challenged
`§2
`1–10
`103(a)
`
`References/Basis
`Breivik II,3 Yoshitomi,4 Budziński,5
`Fricke,6 Bottino II,7 Sampalis I8
`Breivik II, Yoshitomi, Budziński, Fricke,
`Bottino II, Randolph,9
`Breivik II, Yoshitomi, Budziński, Fricke,
`Bottino II, Randolph, Sampalis I
`
`11, 12
`
`13–19
`
`103(a)
`
`103(a)
`
`Pet. 11.
`
`
`2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the ’046
`patent has an effective filing date before the March 16, 2013, effective date
`of the applicable AIA amendments, we refer to the pre-AIA versions of
`35 U.S.C. §§ 102 and 103.
`3 Breivik, WO 2008/060163 A1, published May 22, 2008 (Ex. 1037).
`Breivik claims priority to U.S. Provisional Application No. 60/859,289, filed
`November 16, 2006. Ex. 1037, code [30].
`4 Yoshitomi et al., US 2003/0113432 A1, published June 19, 2003
`(Ex. 1033).
`5 Budziński, E., et al., Possibilities of processing and marketing of products
`made from Antarctic krill, FAO Fish.Tech. Pap., (268):46 (1985) (Ex. 1008).
`6 Fricke et al., Lipid, Sterol and Fatty Acid Composition of Antarctic Krill
`(Euphausia superba Dana), 19(11) LIPIDS 821–827 (1984) (Ex. 1010).
`7 Bottino, Lipid Composition of Two Species of Antarctic Krill: Euphausia
`superba and E. crystallorophias, 50B COMP. BIOCHEM. PHYSIOL. 479–
`484 (1975) (Ex. 1038).
`8 Sampalis et al., Evaluation of the Effects of Neptune Krill Oil™ on the
`Management of Premenstrual Syndrome and Dysmenorrhea, 8(2) ALT.
`MED. REV. 171–179 (2003) (Ex. 1012).
`9 Randolph et al., US 2005/0058728 A1, published Mar. 17, 2005
`(Ex. 1011).
`
`7
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`Patent 9,816,046 B2
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`II. ANALYSIS
`A.
`Legal Standards
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) if in the record, objective
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`
`Level of Ordinary Skill in the Art
`B.
`Petitioner provides the following definition of the ordinarily skilled
`artisan
`A [person of ordinary skill in the art] would have held an
`advanced degree in marine sciences, biochemistry, organic
`(especially lipid) chemistry, chemical or process engineering, or
`associated sciences with complementary understanding, either
`through education or experience, of organic chemistry and in
`particular lipid chemistry, chemical or process engineering,
`marine biology, nutrition, or associated sciences; and
`knowledge of or experience in the field of extraction. In
`addition, a [person of ordinary skill in the art] would have had
`at least five years applied experience.
`Pet. 9–10 (citing Ex. 1006 ¶¶ 36–37).
`Neither Patent Owner nor Dr. Jaczynski disputes Petitioner’s
`definition of a person of ordinary skill in the art. Ex. 2015 ¶ 8 (“For
`
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`Patent 9,816,046 B2
`purposes of this proceeding, I will accept [Petitioner’s] definition of a
`[person of ordinary skill in the art].”).
`Upon review of the ’046 patent and the prior art of record, we find
`Petitioner’s uncontested definition reasonable and supported by the evidence
`of record. Accordingly, we adopt this definition of one of ordinary skill in
`the art for purposes of this Decision.
`C.
`Claim Construction
`Petitioner provides proposed claim constructions for the terms “krill
`oil,” “polar solvent,” “astaxanthin ester,” “krill meal,” and “destroy the
`activity of lipases and phospholipases.” Pet. 33–38. With respect to “krill
`meal,” Petitioner contends this term should be construed to mean “processed
`krill with reduced water content from which krill oil can be extracted.” Id.
`at 37.
`
`Patent Owner contends the term “destroy the activity of lipases and
`phospholipases” should be given its plain and ordinary meaning.
`PO Resp. 11. With respect to “krill meal,” Patent Owner contends
`Petitioner’s proposed construction of “krill meal” is overbroad and ignores
`the ordinary and customary meaning of a “meal,” which is a “powder
`formed by particle size reduction of a starting material.” Id. at 8 (citing Ex.
`2015 ¶¶ 13–15). Thus, Patent Owner construes “krill meal” to mean “a krill
`powder resulting from the processing of krill.” Id. at 11.
`Upon review of the parties’ arguments and supporting evidence, we
`determine that no terms of the ’046 patent require construction in order to
`resolve the disputes in this proceeding. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
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`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”)).
`D. Collateral Estoppel
`Petitioner contends that, with the exception of Budziński, each of the
`“references relied on by Petitioner was evaluated and applied by the Board
`in IPRs involving Patent Owner’s” related patents. Pet. 39. Petitioner
`further contends that in two prior IPRs the Board analyzed similar subject
`matter to that claimed in the ’046 patent and found the claims unpatentable.
`Id. at 40. “Given the materially identical claim limitations and common
`references,” Petitioner contends “the Board’s factual findings and
`conclusions of law regarding, inter alia, the teachings of the prior art, the
`motivation to combine those teachings, and claim construction in the prior
`Final Written Decisions should be given preclusive effect.” Id.
`As is set forth and explained below, the parties’ primary dispute in
`this proceeding is whether one of ordinary skill in the art would have found
`it obvious to extract krill oil from a denatured krill meal that has been stored
`from 1 to 36 months. Petitioner concedes that this precise issue was not
`considered in the prior IPRs, but contends collateral estoppel still applies
`because the “inclusion of an intuitive and common sense storage limitation
`does not materially alter the question of the ’046 patent’s unpatentability.”
`Pet. Reply 6–7.
`“Collateral estoppel protects a party from having to litigate issues that
`have been fully and fairly tried in a previous action and adversely resolved
`against a party-opponent.” Ohio Willow Wood Co. v. Alps South, LLC, 735
`F.3d 1333, 1342 (Fed. Cir. 2013). In the context of patent claims, collateral
`estoppel applies “[i]f the differences between the unadjudicated patent
`
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`Patent 9,816,046 B2
`claims and adjudicated patent claims do not materially alter the question of
`invalidity.” Id.
`Petitioner points to no prior decision of the Board where the issue of
`whether it would have been obvious to denature a krill product and then
`store it for 1 to 36 months before extraction was at issue. Moreover, to
`demonstrate that the added limitation would have been obvious, Petitioner
`relies heavily on the disclosures of Budziński, which was not at issue or
`analyzed in the prior proceedings. Pet. 39. Accordingly, Petitioner has not
`demonstrated that collateral estoppel applies to any issue in this proceeding.
`E.
`Reliance on Breivik II
`Patent Owner contends the invention recited in the claims of the
`’046 patent was conceived and reduced to practice prior to the earliest
`possible priority date of Breivik II. PO Resp. 20. And, because each ground
`asserted in the Petition relies on Breivik II, Patent Owner contends the
`Petition must be denied. Id. at 38.
`Petitioner asserts that Patent Owner has failed to antedate Breivik II.
`Pet. Reply 7.
`For the reasons set forth below, we determine that Petitioner has
`shown by a preponderance of the evidence that challenged claims 1–19
`would have been obvious over Yoshitomi, Budziński, Fricke, Bottino II, and
`Sampalis I and/or Randolph, when considered in light of the undisputed
`knowledge of one of ordinary skill in the art. Thus, we need not decide
`whether Patent Owner’s evidence of conception and reduction to practice is
`sufficient to antedate Breivik II with respect to these claims, as we do not
`rely on it as a prior art reference in this proceeding.
`
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`Patent 9,816,046 B2
`F. Claims 1–19 over Yoshitomi, Budziński, Fricke, Bottino II, and
`Sampalis I
`Petitioner contends that the subject matter of claims 1–10 would have
`been obvious over the combined disclosures of Yoshitomi, Budziński,
`Fricke, Bottino II, and Sampalis I. Pet. 41–57.
`1.
`Yoshitomi
`Yoshitomi discloses that krill enzymes cause krill to lose freshness in
`a short period of time after being hauled on-board a ship and that these
`enzymes may be disabled or inactivated either by quickly freezing the krill
`below -40º C or by heating the krill above 80º C. Ex. 1033 ¶¶ 5–6.
`Yoshitomi explains that various denatured krill products were known
`in the art, including “boiled krill products which are heated and then
`preserved in a frozen condition” and krill meals that are heated, dried, and
`then “preserved at the normal temperature.” Id. ¶ 7. To improve upon these
`known products, Yoshitomi describes chopping krill material into pieces and
`then placing the pieces into a heating and drying machine. Id. ¶ 37.
`Yoshitomi notes that this process results in “a dried powdery and granular
`krill product” that “contains all components of krill and in which lipid
`degradation is sufficiently prevented” without using an antioxidant. Id. ¶¶ 2,
`9, 22 (noting that the heating process results in a krill meal wherein “the
`proteolytic enzymes originally contained in krill materials are perfectly
`disabled”).
`Yoshitomi provides experimental evidence of the stability of its krill
`meal. Id. ¶¶ 43–45, Table 3. In one example, Yoshitomi stores two
`denatured krill meals at 37º C, one with and one without additional
`antioxidants. Id. ¶ 43. Until the end of the first month of storage, there was
`no significant difference in lipids between the two krill meals. Id.¶ 44.
`
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`After two months of storage, oxidation proceeded “slightly faster in the
`group added with no anti-oxidant than the group added with the anti-oxidant,
`but a significant difference was not found.” Id. ¶¶ 44, 46 (noting that in the
`disclosed krill product “lipid degradation can be prevented satisfactorily
`without using any anti-oxidant”).
`Budziński
`2.
`Budziński, published in 1985, “presents the current state of possible
`commercial-scale uses of krill-processing technologies,” including
`processing technologies for products for “human consumption, animal feed,
`and industrial purposes.” Ex. 1008, Abstr. Budziński explains that the
`“main difficulty in krill processing” is caused by proteolytic enzymes, such
`as lipases. Id. at 6.10 According to Budziński, lipases “cause the
`decomposition of phospholipids and, to a lesser degree, triglycerides,” and
`result in an increase in free fatty acids in krill oil. Id. at 6–7. To avoid
`enzyme degradation of krill products, Budziński explains that storage time
`for raw krill products “should be as short as possible” and that vessels “must
`be properly equipped for processing” krill as soon as possible after capture.
`Id. at 9, 20 (“Efforts should be made to regulate catches so that the time
`before processing is as short as possible.”), 25 (“Due to its technological
`properties, the raw materials should be processed as soon as possible after
`capture. The only way to meet this requirement is to install processing
`facilities on-board the vessel.”). Budziński discloses that the optimum
`temperature for heating krill is believed to be 80–85 ℃ and that a properly
`
`
`10 Unless otherwise noted, citations to prior art references are to the original
`page numbers of the documents, not to the page numbers added by Petitioner
`in the lower right corner of the documents.
`
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`Patent 9,816,046 B2
`processed krill meal is “stable for 13 months of storage without addition of
`antioxidants.” Id. at 20–22.
`
`Fricke
`3.
`Fricke reports the total lipid content and composition for krill samples
`caught in the Antarctic Ocean in December 1977 and March 1981.
`Ex. 1010, Abstr., 822. Fricke reports that “[k]rill samples of 5 kg were
`quick-frozen and stored at -35 C until analyzed” and that “lipid extraction
`was performed according to Folch et al.” Id. at 821. The samples analyzed
`in Fricke contained approximately 33.3% +/- 0.5% w/w (1977 sample) and
`40.4% +/- 0.1% w/w (1981 sample) triacylglycerols and 16.1 (1977 sample)
`and 8.5 (1981 sample) percent free fatty acids. Id. at 822.
`Fricke notes that samples from the 1977 sample contained free fatty
`acid levels that were about twice that of the 1981 sample. Id. at 822. In
`contrast, samples of the same haul that had been cooked on board
`“immediately after hauling,” showed a free fatty acid content that “was
`much lower, ranging from 1% to 3% of total lipids.” Id. at 822–23.
`4.
`Bottino II
`Bottino II characterizes the lipids of two species of Antarctic krill,
`Euphasia superba and Euphasia crystallorophias. Ex. 1038, 479. Bottino II
`explains that “when one refers to Antarctic krill, one generally means
`Euphausia superba, which is the most abundant and far better known
`species of krill in the Antarctic Oceans.” Id.
`Bottino II describes a process wherein euphausiids were collected and,
`once on board the ship, the samples rapidly sorted by hand and extracted
`with a “chloroform:methanol (2:1, v/v) mixture.” Id. The fatty acid content
`of the krill product was then determined by gas-liquid chromatography. Id.
`at 480.
`
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`Table 2 of Bottino II is reproduced below.
`
`
`
`Ex. 1038, 481 (Table 2). Table 2 reports the identity and amount of each
`lipid present in the E. superba and E. crystallorophias samples obtained
`from various locations (i.e., stations) (analyzed as a weight percent of total
`lipids). Id. at 480–481. As shown in Table 2, the phosphatidylcholine
`content of krill obtained from Stations 11 and 13 was 48% and 46%,
`respectively, and the lysophosphatidylcholine (i.e., Lyso PC) content was
`1% in both samples. Id. at 481 (Table 2), 483.
`5.
`Sampalis I
`Sampalis I discloses the use of Neptune Krill Oil, or NKO, and notes
`that this product is extracted from Euphausia superba and contains “various
`potent antioxidants including vitamins A and E, astaxanthin,” and at least
`one novel flavonoid. Ex. 1012, 174. Sampalis I also describes the health
`benefits of Neptune Krill Oil and reports that two soft gels of the product
`taken daily “can significantly reduce the physical and emotional symptoms
`related to premenstrual syndrome.” Id. at Abstr.
`
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`
`a)
`
`Analysis of Claim 1
`6.
`“obtaining krill meal produced by a process
`comprising treating the krill to destroy the activity
`of lipases and phospholipases”
`Petitioner contends that obtaining a krill meal through a process of
`treating krill to destroy the activity of lipases and phospholipases was well
`known in the art, as evidenced by Yoshitomi, Budziński, and Fricke.
`Pet. 42–44.
`Yoshitomi discloses heating krill to denature and “perfectly” disable
`“the proteolytic enzymes originally contained in krill materials.” Ex. 1033
`¶ 22. The result is “a dried powdery and granular krill product that contains
`all components of krill” and can be stored for more than two months without
`significant degradation of krill lipids. Id. ¶¶ 9, 22, 24, 42–46; Pet. 43.
`Budziński discloses that “very active lipases” present in krill can
`cause decomposition of phospholipids and increase the level of free fatty
`acids, and that these enzymes can be “fully denatured” using heat. Ex. 1008,
`12, 26; Pet. 43. Budziński further discloses that the resulting krill meal is
`“stable for 13 months of storage without addition of antioxidants.”
`Ex. 1008, 21–22.
`Fricke discloses that krill that are heated immediately after hauling
`on-board a ship have a “much lower” level of free fatty acids, “ranging from
`1% to 3% of total lipids.” Ex. 1010, 822–23.
`Patent Owner does not expressly dispute that this limitation was
`taught or suggested in the prior art.
`Given these disclosures, we find that Yoshitomi, Budziński, and
`Fricke each teach or suggest treating krill to destroy the activity of lipases
`
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`Patent 9,816,046 B2
`and phospholipases, and Yoshitomi and Budziński further disclose obtaining
`a stable, denatured krill meal. Ex. 1006 ¶¶ 171–172, 288–296, 417–419.
`b)
`“wherein said krill meal has been stored for a
`period of from 1 to 36 months”
`Petitioner contends that Budziński and Fricke teach or suggest storing
`a denatured krill meal for a period of from 1 to 36 months. Pet. 44.
`Budziński expressly discloses denaturing krill using heat, and explains
`that “[e]xtensive investigations” on various types of krill meal “have shown
`that they are stable for 13 months of storage without addition of
`antioxidants.” Ex. 1008, 21–22. Fricke discloses that a krill product that
`was “cooked on board immediately after hauling” and then stored before
`extraction had a “much lower” level of free fatty acids than products that
`were not cooked before storage. Ex. 1010, 823.
`Patent Owner does not expressly dispute that it was known in the art
`that a denatured krill meal could be stored for between 1 and 36 months.
`Upon review of the record, we find that Budziński discloses a
`denatured krill meal that was successfully stored for at least 13 months and
`that Fricke teaches or suggests that denatured krill products may be stored
`for an extended period of time prior to extraction. As such, these references
`teach or suggest storing a denatured krill meal “for a period of from 1 to 36
`months.”11
`
`
`11 Yoshitomi describes a denatured krill meal that was stored for at least two
`months without evidence of significant oxidation. Ex. 1033 ¶¶ 43–46;
`Ex. 1006 ¶¶ 296, 417; Pet. 44 n.7 (Petitioner noting the “good preservation
`ability” of Yoshitomi’s krill meal).
`
`
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`IPR2020-01533
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`c)
`
`“extracting krill oil from said krill meal that has
`been stored from 1 to 36 months with a polar
`solvent”
`Petitioner contends that extracting krill oil using a polar solvent was
`known in the art, as described in Fricke, Bottino II, and Budziński. Pet. 45;
`Ex. 1006 ¶¶ 424–428, 431, 463.
`Budziński discloses storing krill for up to 13 months and extracting
`krill oil using “various organic solvents” and provides tables showing the
`chemical composition of krill meals. Ex. 1008, 21–24, Tables 11–13.
`Fricke discloses cooking krill to form a denatured product, storing the
`product for a period of time, and then extracting lipids from this product
`using a polar solvent. Ex. 1010, 821–823 (noting that krill samples were
`frozen and lipids then subsequently extracted using the method of Folch et
`al.); Ex. 1017, 509 (Folch describing the extraction lipids from animal tissue
`using a 2:1 Chloroform-methanol mixture); Ex. 1006 ¶ 300 (Dr. Tallon
`explaining that Folch uses a polar solvent for extraction). And Bottino II
`discloses catching krill and then extracting lipids using a polar solvent.
`Ex. 1038, 479–480; Ex. 1006 ¶ 428.
`Patent Owner asserts that Petitioner’s evidence with respect to this
`claim limitation is insufficient because neither Budziński, Fricke, nor
`Bottino II discloses using a polar solvent to extract krill oil from a krill meal
`that has been stored from 1 to 36 months. PO Resp. 38–39. With respect to
`Budziński, Patent Owner concedes that this reference discloses a “stable”
`krill meal that can be stored for up to 13 months without antioxidants, and
`that krill oil can be extracted using various organic solvents, but contends
`that these constitute “two separate, unrelated statements” that are not “a
`
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`IPR2020-01533
`Patent 9,816,046 B2
`disclosure of the claim element of extracting krill oil from a krill meal after
`storage of the krill meal for from 1 to 36 months.” Id. at 39.
`Patent Owner further contends that Fricke discloses extraction from
`“cooked krill,” not a krill meal, and Fricke “contains no teaching as to the
`storage time for the cooked krill, how the cooked krill was extracted, or lipid
`classes other than free fatty acids that may or may not have been present in
`the cooked krill.” Id. at 41.
`With respect to Bottino II, Patent Owner contends this reference
`contains no disclosure of extracting krill oil from a krill meal, “much less
`krill meal that has been stored for from 1 to 36 months.” Id. at 44.
`According to Patent Owner, because “none of the references relied on
`by Petitioner teach . . . ‘extracting krill oil from said krill meal that has been
`stored from 1 to 36 months with a polar solvent,’” Petitioner has failed to
`carry its burden of proving that the combined references teach this claim
`limitation. Id. at 44–45.
`When addressing the question of obviousness, we consider what the
`disclosures of the prior art, as a whole, would have taught or suggested to
`one of ordinary skill in the art. See Bradium Techs. v. Iancu, 923 F.3d 1032,
`1050 (Fed. Cir. 2019). We do not limit our analysis to what each reference
`discloses in isolation. Id. (“A finding of obviousness, however, cannot be
`overcome ‘by attacking references individually where the rejection is based
`upon the teachings of a combination of references.’”); see Fleming v. Cirrus
`Design Corp., No. 2021-1561, 2022 WL 710549, at *6 (Fed. Cir. March 10,
`2022) (explaining that “it is sufficient that a person of ordinary skill in the
`art would have been motivated to combine the prior art in a way such that
`the combination discloses the claim limitations”) (emphasis added).
`
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`Upon review of the record as a whole, we find that it was known in
`the art that krill oil could be extracted from krill products using a polar
`solvent, including from denatured krill products stored for a period of time
`before extraction. Ex. 1008, 24; Ex. 1010, 821–823; Ex. 1038, 479–480;
`Ex. 1006 ¶ 424; Ex. 1086 ¶ 26; Ex. 2001, 14; Ex. 2015 ¶ 27. The prior art of
`record also demonstrates that denatured krill meals could be successfully
`stored for between 1 and 36 months. Ex. 1008, 21–22 (Budziński disclosing
`that “[e]xtensive investigations” have shown that denatured krill meals are
`“stable for 13 months of storage without addition of antioxidants”); see also
`Ex. 1033 ¶¶ 24, 44, Tables 2, 3 (Yoshitomi disclosing that denatured krill
`meal can be stored at normal temperatures due to its low water content and
`that krill lipids were
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