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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.: IPR2020-01533
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`U.S. Patent 9,816,046
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`Issue Date: November 14, 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.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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`TABLE OF CONTENTS
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`I.
`II.
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`V.
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`C.
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`INTRODUCTION ........................................................................................... 1
`PETITIONER’S “KRILL MEAL” CONSTRUCTION
`IS SUPPORTED BY THE INTRINSIC EVIDENCE .................................... 2
`III. COLLATERAL ESTOPPEL APPLIES .......................................................... 6
`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 1-19 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
`Patent Owner’s Arguments Regarding Grounds 2 and 3
`Are Similarly Meritless ....................................................................... 29
`VI. CONCLUSION ..............................................................................................30
`VII. CERTIFICATE OF COMPLIANCE ............................................................31
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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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) ................................................................... 28
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002) ................................................................... 13
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) ................................................................... 14
`Dow Chem. Co. v. Am. Cyanamid Co.,
`816 F.2d 617 (Fed. Cir. 1987) ..................................................................... 20
`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) ................................................................... 27
`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) ................................................................... 21
`KSR Int’l v. Teleflex Inc.,
`550 U.S. 398 (2007)..................................................................................... 24
`LG Elecs., Inc. v. Conversent Wireless Licensing S.A.R.L.,
`759 F. App’x 917 (Fed. Cir. 2019) .............................................................. 29
`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
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) ................................................................... 20
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`Inter Partes Review Case No.: IPR2020-01533
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`U.S. Patent No. 9,816,046
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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) ................................................................... 11
`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 Tanczyn,
`146 USPQ 298 (CCPA 1965) ...................................................................... 16
`Vitronics Corp. v. Conceptronic,
`90 F.3d 1576 (Fed. Cir. 1996) ....................................................................... 5
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`Inter Partes Review Case No.: IPR2020-01533
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`I.
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`INTRODUCTION
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`U.S. Patent No. 9,816,046
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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 1-36 months prior to solvent extraction is novel and
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`affords patentability to the process recited in the ‘046 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 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 ‘046 patent’s 1-36 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 ‘046 patent were obvious, and the ‘046 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 ‘046 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 ‘046 patent’s inventors, Dr. Tilseth, that
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`“heating at the cooking stage” destroys the activity of lipases and phospholipases
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`U.S. Patent No. 9,816,046
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`present in krill (i.e., denatures).
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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 1-19 of the ‘046 patent would
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`have been obvious. See Petition, pp. 41-88.1
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`II.
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`Patent Owner’s
`Construction
`“krill powder resulting from
`the processing of krill.”
`POR, 8-11.
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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., ¶¶
`138-156; Tallon Reply, ¶¶ 38-47.
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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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`First, Patent Owner’s construction is inconsistent with the intrinsic evidence.
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`Tallon Decl., ¶¶ 138-146, 153-156; Tallon Reply, ¶¶ 38-39, 44-47. For example,
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`the ‘046 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, ¶¶ 38, 47. 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, 31:63-66 (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, ¶¶ 38, 47. The ‘046 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, ¶¶ 38, 47. Example 7 also teaches: “Krill lipids were
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`extracted from krill meal (a food grade powder). . . .” Exhibit 1001, 32:15-16.
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`2 Neither construction requires “krill meal” to be denatured. Tallon Reply, ¶ 39.
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`The ‘046 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, ¶¶ 38, 45, 47.3
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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 ‘046 patent with a “reduction in particle size.” POR, 10-11.
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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, ¶¶ 42, 44-47.4
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`3 “Krill meal” and “krill powder” appear in the ‘046 patent specification and an in
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`exhibit cited by Patent Owner suggesting that these phrases have different meanings.
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`Compare Exhibit 1001, 21:50-52, 33:23 with Exhibit 2013, 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 numbers
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`of 4.8 and 6.2. Yet flow numbers “above 5 signif[ies] a powder with poor flow
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`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),5 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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`Exhibit 2015, ¶ 13. 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 ‘046 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, ¶ 40; see
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`Exhibit 1070 (Jaczynski Dep.), 22:18-23:1; 26:15-27:25;174:3-16.
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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, 9. However, Dr. Tallon expressly testified that his
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`constructions would be the same under either standard. Tallon Reply, ¶ 37.
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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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`5 Patent Owner does not refer to Dr. Jaczynski’s other meritless claim construction
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`argument based on Budziński. See Tallon Reply, ¶ 39.
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`Written Decisions finding five other “krill oil” patents in the same family as the
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`U.S. Patent No. 9,816,046
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`‘046 patent unpatentable. Exhibits 1103-1104, 1129, 1157-1159. Patent Owner,
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`however, wants the Board to ignore its previous analyses of this same prior art.
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`See POR, 12-17. Because the inclusion of an intuitive and common sense storage
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`limitation does not materially alter the question of the ‘046 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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`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 ‘046 patent, Dr. Tilseth, that the
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`invention recited in the ‘046 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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`U.S. Patent No. 9,816,046
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`Inter Partes Review Case No.: IPR2020-01533
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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); see Dynamic
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`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378-80 (Fed. Cir. 2015).
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`To satisfy this burden, Patent Owner must demonstrate performance of a process
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`meeting all limitations of the claimed invention and show the invention worked for
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`its intended purpose. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed.
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`Cir. 2006). However, evidence of actual reduction to practice cannot rest on
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`inventor testimony. Id. at 1170-71. Instead, Patent Owner must proffer
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`independent evidence corroborating Dr. Tilseth’s testimony. Id. at 1171-72 (“Even
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`the most credible inventor testimony is a fortiori required to be corroborated by
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`independent evidence. . . .”).
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`A key limitation of independent claims 1 and 13 is the destruction of the
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`activity of krill lipases and phospholipases. Consequently, Patent Owner must
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`proffer evidence, apart from Dr. Tilseth’s testimony, showing krill was denatured
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`and oil extracted from that denatured krill product.6
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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, 20-21.
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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 using a “standard meal process,” or
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`provide the operating conditions of such a process;
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`6 During prosecution, applicants argued “destruction of the activity of lipases
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`and phospholipases” is synonymous with “denaturation.” Exhibit 1113, p.
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`0061-0062; see Petition, 37-38; Tallon Decl., ¶¶ 117-122; Tallon Reply, ¶ 8.
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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, 20-21, 25-26, 28-29, 32-33. Additionally, neither Sections
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`6.1-6.2 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 denatured krill
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`meal. Tallon Reply, ¶¶ 14-15, 24, 29, 31.
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`Dr. Tilseth’s post-hoc interpretation of this 15-year old document cannot be
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`used to backfill the gaps in what is not found within the four corners of Sections
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`6.1-6.2. In fact, the Federal Circuit has rejected the same circular logic underlying
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`Patent Owner’s attempt to have Dr. Tilseth “self-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 of Dr. Tilseth’s testimony
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`underlying that inventor’s reduction to practice story. See Tallon Reply, ¶ 29;
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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 a “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 “drying” could be conducted at various temperatures for
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`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; see Tallon Reply ¶¶ 16-18, 20-22, 46.7 Importantly,
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`Exhibit 2003 fails to provide the temperature or duration for the “drying stage.”
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`Tallon Reply, ¶ 20. 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. 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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`Jaczynski’s Declaration is in the chart reproduced verbatim from Patent Owner’s
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`7 In fact, Patent Owner’s expert asserted “cooking” is insufficient to confirm that
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`denaturation has occurred. See Exhibit 1070 (Jaczynski Dep.), 134:21-135:7.
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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, 25-38.8 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.9 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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`documentation does not corroborate an inventor’s testimony about inventive
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`8 This identical chart is also reproduced in Dr. Tilseth’s Declaration. Exhibit
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`2001, ¶17.
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`9 Exhibits 2006 and 2011 are purportedly translations of Exhibits 2005 and 2010.
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`facts.”); see Exhibit 2001, ¶¶ 9-11; POR, 21-23, 26-27, 30, 33-35. Additionally,
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`Patent Owner cannot rely on Dr. Tilseth’s current interpretation of his notes
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`(Exhibits 2010/2011) to demonstrate an actual reduction to practice that satisfied
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`the ‘046 patent’s intended purpose. Exhibit 2001, ¶¶ 12, 15 (“suitable for both
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`encapsulation and for further processing”); see In re Garner, 508 F.3d 1376, 1380
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`(Fed. Cir. 2007) (“necessary to corroborate that device worked for its intended
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`purpose”). First, Dr. Tilseth’s notes cannot corroborate his reduction to practice
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`story. Second, these notes do not describe Dr. Tilseth’s expectations, but those of
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`a third party who believed that “special capsules” could possibly be “designed” to
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`encapsulate krill oil. Exhibit 2011, p. 0003. That future possibility, however,
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`demonstrates the intended purpose of the ‘046 patent was not satisfied. Newkirk v.
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`Lulejian, 825 F.2d 1581, 1583 (Fed. Cir. 1987) (reduction to practice requires
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`“more than theoretical capability”); Cooper v. Goldfarb, 154 F.3d 1321, 1324
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`(Fed. Cir. 1998) (“inventor must contemporaneously appreciate that the
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`embodiment worked [and] met all the limitations”).
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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 ‘046
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`patent. POR, 19-20. Patent Owner’s reliance on Stempel is inapt.
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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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`Finally, Patent Owner’s interpretation of Stempel was expressly rejected in
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`In re Tanczyn:
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` We 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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`Stempel does not excuse Patent Owner’s failure to corroborate
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`Dr. Tilseth’s reduction to practice testimony.10
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` Finally, the chart comparing the ‘046 patent claims to Dr. Tilseth’s
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`reduction to practice story, and Breivik II is mere chaff that fails to remedy the
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`fatal omissions in Patent Owner’s proofs. POR, 25-38. 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,” “destroy[ing] the activity of lipases and phospholipases.” POR, 25-26,
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`32-33. However, Sections 6.1-6.2 do not describe, inter alia, “cooking,”
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`10 Patent Owner’s reliance on Pfizer is unavailing. POR, 20. 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 meal is a limitation of
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`the claims of the 046.
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`17
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`“destroy[ing] the activity of lipases and phospholipases” or denatured krill meal,
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`and no independent corroboration was proffered supporting those assertions.
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`Supra, 9-10. Additionally, the chart avers that Dr. Tilseth’s notes, Exhibit 2011,
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`demonstrate the encapsulation of denatured krill. POR, 30, 35. However, Patent
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`Owner failed to independently corroborate Dr. Tilseth’s claim of extraction or
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`encapsulation. Supra, 13-14. Further, any inferences Patent Owner tries to draw
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`from the chart’s comparison of Dr. Tilseth’s purported reduction to practice and
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`Breivik II’s 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 1-19 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 Budziński, Breivik
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`II, Fricke, Bottino II, and Randolph, and concludes “none” teach the “extraction of
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`oil from a krill meal that has been stored far from 1 to 36 months.” POR, 38-39,
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`44, 54. Patent Owner’s piece-meal attack of the prior art rigidly focuses on “the
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`disclosures of individual references” without considering the combined teachings
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`of those references and a POSITA’s “creativity [ ] and common sense.” Randall
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`Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see Software Rights Archive,
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`U.S. Patent No. 9,816,046
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`LLC v. 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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`For example, Patent Owner agrees that Budziński discloses stable denatured
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`krill meal that was stored for at least 13 months and that various solvents could be
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`used to extract krill oil.11 Exhibit 1008, pp. 0027-30; see Grantham (Exhibit 1032),
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`p. 0053 (denatured krill meal stored 12 months). Patent Owner urges however,
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`these disclosures are “separate” and “unrelated,” and that Budziński “does not
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`provide any description of any solvent extraction of krill oil.” POR, 39-41.
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`Ignoring that references must be considered “as a whole,” the disclosures regarding
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`the stability of denatured krill meal and solvent extraction are not “unrelated,” but
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`11 Budziński discloses krill is “fully denatured” by boiling, and it is this denatured
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`product that is described as “stable.” Exhibit 1008, p. 0024, 0026-28; see, e.g.,
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`Tallon Reply, ¶¶ 48-51, 137; Tallon Decl., ¶ 490.
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`19
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`instead are found under the section of Budziński entitled: “Actual Possibilities of
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`U.S. Patent No. 9,816,046
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`Krill Processing.” Dow Chem. Co. v. Am. Cyanamid Co., 816 F.2d 617, 623 (Fed.
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`Cir. 1987); Tallon Reply, ¶ 57-60; Exhibit 1008, p. 0005.
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`Patent Owner also quibbles that Dr. Tallon observed Budziński had a “brief”
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`discussion of solvent extraction. POR, 39. Brevity, however, does not detract
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`from Budziński’s disclosure of solvent extraction, particularly when that disclosure
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`is coupled with the next sentence stating that the resulting krill oil could be “a
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`valuable material for oil.” Exhibit 1008, p. 0030; Tallon Reply, ¶¶ 53-54, 122-133.
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`Additionally, Patent Owner urges that Budziński’s observation that it would
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`have been “unrealistic to expect production of krill oil in practice” because of high
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`extraction costs and special equipment “teaches away” from solvent extraction.
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`POR, 39. Patent Owner’s teaching away argument, however, impermissibly
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`restricts a POSITA’s understanding of the art to 1985 when Budziński was
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`published, not March 2006, the ‘046 patent’s earliest effective filing date. See
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`Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012) (POSITA
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`must “analyze[] the prior art . . . at the date of invention”). As of the ‘046 patent’s
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`filing date, a POSITA would have known that krill oil was not only a valuable
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`product as disclosed by Budziński, but would have also recognized that both
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`Neptune and Enzymotec had successfully extracted krill oil on land. See, e.g.,
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`U.S. Patent No. 9,816,046
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`Exhibit 1070 (Jaczynski Dep.), 13:16-14:22; 76:22-77:8; Tallon Reply, ¶¶ 53-54,
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`107-108; Exhibit 1075, pp. 0033-0037; Tallon Decl., ¶¶ 55, 378-380, 462, 523.
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`Additionally, Budziński’s comment regarding “extraction costs” would not have
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`dissuaded a POSITA from land-based extraction, and any concerns regarding thos