Inter Partes Review of US 9,816,046
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`RIMFROST AS
`Petitioner
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`Patent Owner
`
`
`CASE IPR: IPR2020-01533
`
`U.S. Patent No. 9,816,046 B2
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`1
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`RIMFROST AS
`Petitioner
`
`v.
`
`AKER BIOMARINE ANTARCTIC AS
`Patent Owner
`
`
`CASE IPR: IPR2020-01533
`
`U.S. Patent No. 9,816,046 B2
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`1
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Inter Partes Review of US 9,816,046
`
`
`TABLE OF AUTHORITIES .................................................................................. 3
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT .......................... 5
`
`II. CLAIM CONSTRUCTION .......................................................................... 6
`
`III. COLLATERAL ESTOPPEL DOES NOT APPLY ................................... 7
`
`IV. BREIVIK II IS NOT PRIOR ART .............................................................. 7
`
`Petitioner’s arguments fail under the Rule of Reason ........................... 8
`A.
`B. Dr. Tilseth’s testimony is properly corroborated ................................ 19
`C.
`Stempel has not been overruled ........................................................... 20
`
`V.
`
`THE CLAIMS ARE NONOBVIOUS EVEN IF BREIVIK II IS
`ADMITTED AS PRIOR ART .................................................................... 22
`
`A.
`B.
`
`There is a missing element .................................................................. 22
`There is no motivation to combine the references .............................. 28
`
`VI. CERTIFICATE OF COMPLIANCE ........................................................ 31
`
`VIII. CONCLUSION AND PRECISE RELIEF REQUESTED ...................... 31
`
`CERTIFICATE OF SERVICE ............................................................................ 33
`
`
`
`
`
`2
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`ATI Tech. ULC v. Iancu, 920 F.3d 1362, 1370–71 (Fed. Cir. 2019) .......................20
`
`Borror v. Herz, 666 F.2d 569, 573-74 (C.C.P.A. 1981) ..........................................11
`
`Clarke, 356 F.2d 987, 992 (CCPA 1966) ................................................................21
`
`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985) ............................................. 8
`
`E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1077 (Fed. Cir.
`2019) ............................................................................................................ 5, 9, 16
`
`Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) ............................9, 15
`
`Intellectual Ventures II LLC v. Motorola Mobility LLC, 692 F.App’x. 626, 627
`(Fed. Cir. 2017) .................................................................................................9, 15
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
`(Fed. Cir. 2016) .....................................................................................................23
`
`Interstate Circuit v. U.S., 306 U.S. 208, 226 (1939) ...............................................11
`
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (2006) ........................ 8, 9, 16
`
`Motorola Mobility LLC. v. Intellectual Ventures II LLC., IPR2014-00504, Paper
`84, at 17-19 ...........................................................................................................19
`
`NFC Technology, LLC v. Mattal, 871 F.3d 1367, 1372 (Fed. Cir. 2017) ................. 5
`
`Pfizer, Inc. v. Genentech, Inc., IPR2017-01488, Paper 87, at 24 (PTAB Nov. 29,
`2018 .......................................................................................................................19
`
`Price v. Symsek, 988 F.2d 1187, 1195 (Fed.Cir.1993) .............................................. 8
`
`
`
`3
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51
`(Fed.Cir.2001) .......................................................................................................15
`
`Schaub, 537 F.2d 509 (CCPA 1976) .......................................................................21
`
`Sonos, Inc. v. Implicit, LLC, 2019 WL 4419356 (PTAB Sept. 16, 2019) ...............20
`
`Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) ..................................... 20, 21
`
`Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957 ..................................................... 20, 21
`
`Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971) .................................... 20, 21
`
`Tanczyn. Reply, 16, 18 ...................................................................................... 20, 21
`
`Wakefield, 422 F.2d 897 (CCPA 1970) ...................................................................21
`
`
`
`
`
`
`
`4
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`
`Petitioner has failed to provide any analysis under the “rule of reason” that
`
`establishes why Dr. Tilseth’s testimony of conception and reduction to practice of
`
`the claimed invention is not credible. In fact, Petitioner failed to take Dr. Tilseth’s
`
`deposition regarding his Declaration and the corroborating documents cited
`
`therein. Instead of analyzing the evidence provided by Dr. Tilseth as a whole under
`
`the rule of reason, Petitioner focuses solely on the issue of whether a single exhibit
`
`(Ex. 2003) specifically discloses cooking during the krill meal production process.
`
`This narrow focus ignores dispositive portions of Dr. Tilseth’s testimony and
`
`evidences a failure to understand that the rule of reason analysis requires “an
`
`evaluation of all pertinent evidence . . . so that a sound determination of the
`
`credibility of the inventor’s story may be reached.” NFC Technology, LLC v.
`
`Mattal, 871 F.3d 1367, 1372 (Fed. Cir. 2017). Petitioner’s analysis further ignores
`
`controlling case law that provides that the rule of reason does not require that
`
`evidence have a source independent of the inventors on every aspect of conception
`
`and reduction to practice. E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921
`
`F.3d 1060, 1077 (Fed. Cir. 2019). The law requires only that the corroborative
`
`evidence, including circumstantial evidence, support the credibility of the
`
`inventors’ story. Id. Dr. Tilseth’s testimony and supporting corroborative evidence
`
`
`
`5
`
`
`
`
`
`of conception and reduction to practice prior to Breivik II is overwhelming as
`
`Inter Partes Review of US 9,816,046
`
`
`explained in detail below.
`
`Even if Breivik II is applied as prior art, the evidence presented by Petitioner
`
`fails to teach or suggest the claim element of claim element of extraction from a
`
`krill meal treated to destroy lipases and phospholipases that has been stored for
`
`from 1 to 36 months as required by independent claims 1 and 13. None of the prior
`
`art references in Grounds 1, 2 or 3 teach extraction of krill oil from any krill
`
`material that has been stored, much less stored after a denaturation step for the
`
`required time period. Furthermore, references such as Breivik II teach that fresh
`
`krill should be utilized and provide no motivation for a storage period after
`
`denaturation and before extraction.
`
`II. CLAIM CONSTRUCTION
`
`
`
`Petitioner’s claim construction is not consistent with the intrinsic evidence.
`
`Petitioner’s definition of “krill meal” to only require krill with a reduced water
`
`content encompasses whole krill that have been dehydrated. There is no example
`
`in the specification where “krill meal” is used to describe whole krill that has
`
`simply been dehydrated. In every instance cited by Petitioner at pp. 3-4 of it’s
`
`Reply (Paper No. 15; hereinafter Reply) the krill material is processed by a step
`
`
`
`6
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`(e.g., pressing, grinding, etc.) that results in a krill product with a reduced particle
`
`size, i.e., a powder. The resulting krill meal or powder can be wet or dry and
`
`contains a lipid component for extraction. For these reasons, Petitioner’s proposed
`
`construction of “krill meal” is incorrect.
`
`III. COLLATERAL ESTOPPEL DOES NOT APPLY
`
`
`
`Petitioner alleges that collateral estoppel precludes Patent Owner
`
`(hereinafter “PO”) from advancing the same patentability arguments rejected in a
`
`series of Final Written Decisions on different claims. However, Petitioner has
`
`failed to make any argument as to how the alleged collateral estoppel should apply
`
`to any issue in this proceeding. Moreover, Petitioner has failed to address any of
`
`PO’s arguments in its Response to Petition for Inter Partes Review (hereinafter
`
`“Response,” Paper 9) concerning application of collateral estoppel and why it does
`
`not apply to the specific arguments made in PO’s Response, especially the fact that
`
`the claims at issue in this proceeding contain different claim elements. See e.g.,
`
`Response, pp. 12-17. Accordingly, Petitioner’s undeveloped arguments regarding
`
`collateral estoppel should be ignored.
`
`IV. BREIVIK II IS NOT PRIOR ART
`
`
`
`
`
`7
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`
`A. Petitioner’s arguments fail under the Rule of Reason
`
` Petitioner fails to provide any analysis of Dr. Tilseth’s testimony under the
`
`applicable “rule of reason” standard. See Reply, 7-15. The reason for this is clear
`
`– the evidence supporting Dr. Tilseth’s testimony is overwhelming under the rule
`
`of reason standard. Grounds 1, 2 and 3, all of which depend on Breivik II as the
`
`lead reference, fail when Breivik II is removed as prior art.
`
`An inventor’s testimony of conception and reduction to practice must be
`
`corroborated before it can be considered. Price v. Symsek, 988 F.2d 1187, 1195
`
`(Fed.Cir.1993). “Sufficiency of corroboration is determined by using a ‘rule of
`
`reason’ analysis, under which all pertinent evidence is examined when determining
`
`the credibility of an inventor’s testimony.” Medichem, S.A. v. Rolabo, S.L., 437
`
`F.3d 1157, 1170 (2006). “Credibility concerns undergird the corroboration
`
`requirement, the purpose of which is to prevent fraud.” Id. Thus, the corroboration
`
`requirement provides “a safeguard against courts being deceived by inventors who
`
`may be tempted to mischaracterize the events of the past through their testimony.”
`
`Id.
`
`The “rule of reason” was developed to ease the requirement of
`
`corroboration. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). In
`
`particular, “[d]espite the importance of the independence requirement, however,
`
`
`
`8
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`[t]he law does not impose an impossible standard of ‘independence’ on
`
`corroborative evidence by requiring that every point of a reduction to practice be
`
`corroborated by evidence having a source totally independent of the inventor....”
`
`Medichem, 437 F.3d at 1171. Indeed, “the corroboration requirement has never
`
`been so demanding” such that the corroborating evidence must ‘constitute[ ]
`
`definitive proof of [the inventor’s] account or disclose[ ] each claim limitation as
`
`written.’” Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014)(citing
`
`Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.Cir.1998)); see also Intellectual
`
`Ventures II LLC v. Motorola Mobility LLC, 692 F.App’x. 626, 627 (Fed. Cir.
`
`2017). The focus must be on whether the corroborative evidence, including
`
`circumstantial evidence, supports the credibility of the inventors’ story. Du Pont.,
`
`921 F.3d at 1077.
`
`When Dr. Tilseth’s testimony is viewed in light of the rule of reason, there
`
`can be no doubt of the sufficiency of corroboration of that testimony of conception
`
`and reduction to practice prior to Breivik II. Dr. Tilseth testified that “by at least as
`
`early as September 14, 2006, we had developed a method of extracting krill oil
`
`with a polar solvent (specifically ethanol) from freshly harvested krill treated to
`
`denature lipases and phospholipases in the krill (specifically krill meal produced by
`
`cooking and drying the krill) on a ship and then stored for 13 months prior to the
`
`
`
`9
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`extraction.” Ex. 2001, ¶¶15, 17. The denatured krill meal is described both in Ex.
`
`2003 and in Example 1 of Ex. 1005, which is the priority provisional application
`
`for the ‘046 patent filed on March 28, 2007. Id., ¶8. Dr. Tilseth further testified that
`
`the denatured krill meal was stored for 13 months and then extracted with ethanol
`
`to provide krill oil as evidenced by the following exhibits:
`
` Exs. 2005, 2006 and 2007 (May 2006 meeting notes, certified
`
`translation, and metadata establishing date);
`
` Exs. 2008 and 2009 (Draft agreement and metadata establishing date);
`
` Exs. 2010, 2011 and 2012 (June 2006 meeting notes, certified
`
`translation, and metadata establishing date); and
`
` Exs. 2013 and 2014 (K313 Report and metadata establishing date).
`
`See Ex. 2001, ¶¶9-14. Additionally, Dr. Tilseth testified that data on the extracted
`
`krill oil provided in Table 3 of Ex. 2013 (p. 0007) is provided in Table 8 of the
`
`‘046 Patent (Ex. 1001, p. 0036) and at Table 8 (page 0028) of Ex. 1005. Ex. 2001,
`
`¶14.
`
`The main thrust of Petitioner’s argument is the alleged fatal “absence of
`
`independent corroboration of Dr. Tilseth’s testimony that denaturation occurs
`
`during the ‘cooking stage.’” Reply, 7-9. As explained below, Petitioner’s
`
`
`
`10
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`argument ignores both Dr. Tilseth’s actual testimony and the rule of reason
`
`standard for corroboration of inventor testimony.
`
`First, Petitioner cancelled the scheduled deposition of Dr. Tilseth (see Paper
`
`14), failing to obtain evidence from the most pertinent source. See, e.g., Interstate
`
`Circuit v. U.S., 306 U.S. 208, 226 (1939)(“The production of weak evidence when
`
`strong is available can lead only to the conclusion that the strong would have been
`
`adverse.”) 1 If Petitioner doubts aspects of Dr. Tilseth’s testimony, it should have
`
`deposed him on those points.
`
`
`
`Second, there can be no dispute that the documents sufficiently corroborate
`
`Dr. Tilseth’s testimony that krill meal produced on board the Atlantic Navigator
`
`and then stored for 13 months was extracted with a polar solvent (ethanol) to yield
`
`
`1 Petitioner also failed to present any contradictory testimony from inventor Inge
`
`Bruheim who is now employed by and under the control of Petitioner (i.e.,
`
`Rimfrost AS). Ex. 2024 (Tallon Depo.), 0012:8-19. See Borror v. Herz, 666 F.2d
`
`569, 573-74 (C.C.P.A. 1981)(holding “unexplained failure to call any known non-
`
`hostile person who has direct knowledge of facts being developed by the party
`
`raises the inference that the testimony would be unfavorable or at least would not
`
`support the case”).
`
`
`
`11
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`a krill oil containing defined amounts of phospholipids prior to the Nov. 16, 2006
`
`priority date of Breivik II. Petitioner has not challenged the 13 month storage
`
`period, extraction with a polar solvent, or the metadata establishing the dates for
`
`the corroborating documents.
`
`
`
`Third, the sole aspect of Dr. Tilseth’s testimony that Petitioner challenges
`
`(i.e., whether a standard krill meal process was used on the meal described in the
`
`corroborating documents so as to produce a denatured krill material) can only
`
`reasonably be deemed credible and accurate based on the corroborating documents.
`
`Petitioner is simply wrong that the corroborating evidence cited by Dr. Tilseth does
`
`not sufficiently corroborate his testimony that the krill meal was made by the
`
`standard krill meal process that included denaturation by cooking. See Reply, 9-10.
`
`Petitioner focused solely on Sections 6.1 and 6.2 of Ex. 2003 and failed to consider
`
`other evidence cited by Dr. Tilseth.
`
`Indeed, Dr. Tilseth also testified that the krill meal described in Ex. 2003 is
`
`the same meal described in Example 1 of Ex. 1005 (the priority document). Ex.
`
`2001, ¶8. The data provided in Table 13 of Ex. 2003 (p. 0023) is repeated in Table
`
`1 of Ex. 1005 (p. 0023). Those tables are reproduced below for comparison:
`
`
`
`12
`
`
`
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`
`
`As described in Example 1 of Ex. 1005:
`
`
`
`
`
`This disclosure, which occurs in the priority provisional filed March 28, 2007 (Ex.
`
`1005, filed just 4 months after the Breivik II priority date) confirms that the krill
`
`meal described in Ex. 2003 is the identical material and was made by standard
`
`methods known in the art. Further, Ex. 1005 discloses at page 0016 that the “krill
`
`
`
`13
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`oil is extracted from denatured krill meal” and in the next paragraph on p. 0017
`
`that “[e]xamples of the krill oil compositions of the present invention are provided
`
`in Tables 6-17.” Dr. Tilseth testified that data on the extracted krill oil described in
`
`Table 3 of Ex. 2013 is included in Table 8 of the ‘046 Patent (Ex. 1001, p. 0036)
`
`and at page 0028 of Ex. 1005 (Table 8, “Lipid class distribution”).2 See Ex. 2001,
`
`¶14. Taken together, this evidence further corroborates that the krill meal used in
`
`the extraction described in Ex. 2013 and Table 8 of Ex. 1005 was a denatured krill
`
`meal. Petitioner and its expert did not consider Ex. 1005 and Dr. Tilseth’s related
`
`testimony in their analysis. See Ex. 2024 (Tallon Depo.), 0010:13 – 0011:1.
`
`
`
`When viewed as a whole, this contemporaneous evidence conclusively
`
`establishes that the krill meal produced onboard the Atlantic Navigator as
`
`described in Ex. 2003 was produced by a standard krill meal process that provided
`
`a denatured krill meal as testified by Dr. Tilseth. The fact that Ex. 1005 is dated
`
`four months after Breivik II does not rule out its use to corroborate Dr. Tilseth’s
`
`
`2 The krill meal in Example 1 of Ex. 1005 (i.e., the krill meal described in Ex.
`
`2003) was also used in the extraction described in Example 3 and a polar krill oil
`
`with a low content of free fatty acids (0.6%) was obtained, further confirming that
`
`the krill meal was denatured. See Ex. 1005 at 0028 and Table 17, p. 0036.
`
`
`
`14
`
`
`
`
`
`testimony that the krill meal described in Ex. 2003 was in fact denatured. See, e.g.,
`
`Inter Partes Review of US 9,816,046
`
`
`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51
`
`(Fed.Cir.2001) (“Documentary or physical evidence that is made
`
`contemporaneously with the inventive process provides the most reliable proof that
`
`the inventor’s testimony has been corroborated”); see also Intellectual Ventures II,
`
`692 F.App’x. at 628. Dr. Tilseth’s testimony provides the evidence that the early
`
`inventive work used denatured krill meal made via a standard process. The
`
`corroborating documents, while not required to support this specific testimony,
`
`strongly evidence the veracity of his testimony overall.
`
`Fourth, Petitioner’s analysis, which makes no mention of the “rule of
`
`reason” standard, fails to consider the evidence of corroboration as a whole and
`
`instead provides an analysis that focuses on the alleged failure to corroborate each
`
`claim element as written. This approach is inconsistent with the “rule of reason.”
`
`See Fleming 774 F.3d 1371, 1377. Specifically, Petitioner argues that Section 6.1
`
`and 6.2 of Ex. 2003 do not indicate that the meal was made by a standard process
`
`or provide the conditions of the process or that that there was a cooking stage.
`
`Reply, 10. Petitioner further erroneously argues “Dr. Tilseth’s post-hoc
`
`interpretation of two sections from this 15-year old document cannot be used to
`
`backfill the gaps in what is not found within the four corners of Sections 6.1-6.2.”
`
`
`
`15
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`Id. These arguments underscore Petitioner’s lack of understanding of
`
`corroboration under the rule of reason. It is the antithesis of the rule of reason to
`
`require evidence on every aspect of conception and reduction to practice. E.I. du
`
`Pont De Nemours & Co., 921 F.3d 1060, 1077 (Fed. Cir. 2019). Contrary to
`
`Petitioner’s assertions, every aspect does not need to be in the four corners of the
`
`Sections 6.1 and 6.2 of Ex. 2003.
`
`As required under the rule of reason, the totality of the evidence supports the
`
`credibility of Dr. Tilseth’s testimony. See, e.g., Medichem, 437 F.3d at 1171. As
`
`discussed above, Petitioner ignored Dr. Tilseth’s testimony regarding the
`
`disclosure of Ex. 1005. That evidence supports the credibility of Dr. Tilseth’s
`
`testimony.
`
`Moreover, the evidence establishes that it was well understood that the
`
`standard or traditional krill meal process involved a cooking step that denatures
`
`lipases and phospholipases. Thus, even if the disclosure of Ex. 2003 is considered
`
`in isolation, it still supports the credibility of Dr. Tilseth’s testimony. It cannot be
`
`disputed that Ex. 2003 describes production of krill meal. Petitioner’s only
`
`argument is that there is no specific disclosure of whether the krill meal was
`
`cooked so as to denature the lipases and phospholipases present in the krill. This
`
`argument is nothing but a straw-man because as of 2006 and described in detail
`
`
`
`16
`
`
`
`
`
`below, it is undisputed that the process for making krill meal was well known and
`
`Inter Partes Review of US 9,816,046
`
`
`involved the steps of cooking, pressing or centrifuging and drying. Thus, absent
`
`some special description of the krill meal process, any person of skill in the art
`
`reviewing the disclosure of Ex. 2003 (and related documents) would understand
`
`that the krill meal was made by the standard or traditional process involving
`
`cooking, pressing, and drying as testified by Dr. Tilseth.
`
`One need to look no further than the testimony of Petitioner’s expert, Dr.
`
`Tallon, to confirm this fact. Dr. Tallon, referencing Budziński (Ex. 1008),
`
`acknowledged that the “traditional method of krill-meal production is by cooking
`
`and pressing or centrifuging and drying . . . and the resulting denatured krill meal
`
`is stable . . . .” Ex. 1006, ¶168. Dr. Tallon confirmed this conclusion in his Reply
`
`Declaration: “The cooking that occurs during preparation of the krill meal was a
`
`well-known process in the prior art for preventing this enzymatic degradation
`
`allowing for stable storage of a krill meal.” Ex. 1086, ¶46. And further: “The
`
`processes and equipment used to make marine meals (cooking, decanting, pressing,
`
`drying, etc.) bear little resemblance to seed meal processes.” Id., ¶36.
`
`Further, as testified by Dr. Jaczynski, when krill meal is referenced, one
`
`would assume that the krill meal is made by the traditional process of cooking and
`
`then pressing or centrifuging and drying. Ex. 1170, 0165:8-19. Dr. Jaczynski
`
`
`
`17
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`further confirmed that the processing steps described in Ex. 2003 at pp. 0022-23
`
`were consistent with this traditional process of making krill meal. Id., 0165:25 –
`
`0167:9.
`
`In summary, the totality of the evidence overwhelmingly supports the
`
`credibility of Dr. Tilseth’s testimony of conception and reduction to practice of the
`
`claimed method prior to Breivik II.
`
`Finally, Petitioner makes another straw man argument based on Dr.
`
`Jaczynski’s testimony that denaturation also occurs during the drying stage of the
`
`meal production. Reply, 11-13. First, this testimony does not contradict Dr.
`
`Tilseth’s testimony regarding preparation by the standard krill meal method of
`
`cooking, pressing, pressing and drying and that denaturation occurs during the
`
`cooking step. Dr. Jaczynski’s testimony merely confirms that denaturation would
`
`also occur during application of heat during drying. This is precisely why the
`
`authors of Ex. 2003 note that: “Over the drier and mill the proportion of
`
`phospholipids decreases. Lipid components can disappear by oxidation, and some
`
`of the oxidation products can evaporate during drying and milling.” Ex. 2003, p.
`
`0023. If evaporation is occurring during drying, then denaturation is also
`
`occurring, conistent with Dr. Jaczynski’s testimony. Second, Dr. Jaczynski was
`
`
`
`18
`
`
`
`
`
`directly responding to questions posed by Petitioner about Ex. 2003, therefore it is
`
`Inter Partes Review of US 9,816,046
`
`
`proper to consider that testimony.
`
`Thus, contrary to Petitioner’s arguments which do not apply the rule of
`
`reason, when the evidence of corroboration is properly considered under the rule of
`
`reason the credibility of Dr. Tilseth’s invention story is supported in an
`
`overwhelming fashion. The contemporaneous evidence outlined above consistently
`
`verifies Dr. Tilseth’s testimony concerning extraction of krill oil from a denatured
`
`krill meal that had been stored for 13 months. There is no reasonable basis to
`
`believe that Dr. Tilseth somehow manufactured this story in a post-hoc fashion as
`
`alleged by Petitioner.
`
`B. Dr. Tilseth’s testimony is properly corroborated
`
`Petitioner further alleges that Dr. Tilseth has “self-corroborated” Sections
`
`6.1 and 6.2 of Ex. 2003 and that Dr. Tilseth’s notes cannot corroborate his
`
`reduction to practice story. Reply, 10-11; 14. First, as discussed above, the rule of
`
`reason does not require the supporting evidence to corroborate every single aspect
`
`of conception and reduction to practice. Second, metadata has been provided for
`
`each of Exs. 2003, 2005, 2008, 2010, and 2013 which provides time stamps for the
`
`dates on which the documents were created and last modified. This combination
`
`of testimony and metadata independently corroborates and authenticates the
`
`
`
`19
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`documents. See, e.g., Motorola Mobility LLC. v. Intellectual Ventures II LLC.,
`
`IPR2014-00504, Paper 84, at 17-19 (PTAB March 13, 2020)(citing Sonos, Inc. v.
`
`Implicit, LLC, 2019 WL 4419356 (PTAB Sept. 16, 2019) and ATI Tech. ULC v.
`
`Iancu, 920 F.3d 1362, 1370–71 (Fed. Cir. 2019)).
`
`C.
`
`Stempel has not been overruled
`
`As argued by PO in its Response, all that is required to remove Breivik II as
`
`a prior art reference is to show so much of the claimed invention as the reference
`
`shows. Response, 19-20; citing In re Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957).
`
`PO further cited additional controlling authority for the proposition that even if the
`
`evidence of conception and reduction to practice is not fully commensurate with
`
`the claim, the evidence is sufficient to antedate if the differences are obvious.
`
`Response, 24; citing In re Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974); In
`
`re Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971). PO applied these rules to
`
`minor differences between the corroboration evidence and the disclosure of
`
`Breivik II.
`
`Petitioner asserts that the holding of Stempel is a “nullity” based on Tanczyn.
`
`Reply, 16, 18. This conclusion by Petitioner is erroneous. As held later held by
`
`Judge Rich of the CCPA.:
`
`
`
`20
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`
`It is settled, of course, that an anticipatory disclosure, not a statutory bar, be
`removed as a reference against a generic claim by a Rule 131 affidavit
`showing prior reduction to practice of as much of the claimed invention as
`the reference shows. In re Stempel, 241 F.2d 755, 44 CCPA 820 (1957).
`(See further explanation of Stempel in In re Tanczyn, 347 F.2d 832, 52
`CCPA 1630.)
`
`In re Rainer, 390 F.2d 771, 773-74 (CCPA 1968). Courts continued to apply the
`
`Stempel rule in multiple other cases decided after Tanczyn. See In re Clarke, 356
`
`F.2d 987, 992 (CCPA 1966)(“antedating affidavits must contain facts showing a
`
`completion of ‘the invention’ commensurate with the extent the invention is shown
`
`in the reference, whether or not it be a showing of the identical disclosure of the
`
`reference”); In re Wakefield, 422 F.2d 897 (CCPA 1970); In re Spiller, 500 F.2d
`
`1170 (CCPA 1974)(“resolution of the question of the sufficiency of the Rule 131
`
`showing resides, at least in part, in decisions of this court after Tanczyn . . . which
`
`dealt with fact situations where the showing made by Rule 131 affidavits was less
`
`that the invention claimed but was held sufficient to remove the cited reference
`
`because the differences were obvious”); In re Schaub, 537 F.2d 509 (CCPA
`
`1976)(holding that a reference was antedated applying the rules of Rainer, Stempel
`
`and Clarke).
`
`
`
`In fact, Tanczyn has been limited to its facts. As explained in In re Stryker,
`
`435 F.2d 1340 (CCPA 1971), the Tanczyn court found an affidavit insufficient to
`
`remove a reference where “the subject matter shown in the reference and the
`
`
`
`21
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`affidavit was so different from the claimed invention that the claims were
`
`unobvious and patentable over the reference.” Stryker at 1341. The Stryker court
`
`then specifically held that the “board erred in applying Tanczyn to the facts” of the
`
`case and that an affidavit showing less than the cited reference was sufficient to
`
`remove it. Id. at 1341-42. Here, it cannot be disputed that the Tilseth Declaration
`
`shows prior possession of subject matter on which the claims do read, i.e.,
`
`extraction of krill oil from denatured krill meal that has been stored for from 1 to
`
`24 or 36 months. Thus, Tanczyn does not apply.
`
`V.
`
`THE CLAIMS ARE NONOBVIOUS EVEN IF BREIVIK II IS
`
`ADMITTED AS PRIOR ART
`
`A.
`
`There is a missing element
`
`As argued by PO in its Response, the combined references do not teach the
`
`claim element of extraction from a krill meal treated to destroy lipases and
`
`phospholipases that has been stored for from 1 to 36 months as required by
`
`independent claims 1 and 13. Response, 38, 56. In a belated attempt to supply this
`
`missing claim element, Petitioner makes several arguments, all of which fail.
`
`First, Petitioner argues that “Budziński discloses stable denatured krill meal
`
`that was stored for at least 13 months and that various solvents could be used to
`
`
`
`22
`
`
`
`
`
`extract krill oil.” Reply, 19. This argument is misleading because while Budziński
`
`Inter Partes Review of US 9,816,046
`
`
`does disclose a stable krill meal, there is no disclosure, teaching or suggestion in
`
`Budziński that the meal can serve as a starting point for extraction. Indeed, when
`
`Dr. Tallon was asked during his first deposition as to whether the sole paragraph in
`
`Budziński on p. 0030 that references solvent extraction of krill oil disclosed
`
`extraction from krill meal, he admitted that “it doesn't describe much of the detail
`
`of how that organic solvent extraction might be done.” Ex. 2019, 0036. And when
`
`asked if there was any other disclosure in Budziński of extraction from any krill
`
`meal (much less a stored krill meal), Dr. Tallon admitted that it would be necessary
`
`to look to other references. Ex. 2019, 0040:19 – 0041:14. There is certainly no
`
`disclosure of extraction from krill meal (or any other krill source denatured or not)
`
`stored for any amount of time.
`
`Petitioner’s next attempt to supply the missing element relies on introducing
`
`another reference to the instituted Grounds – Ex. 1160 (Fricke 1986)3 - through a
`
`
`33 This argument should not be considered as Fricke 1986 was not cited in the
`
`Grounds in the Petition on which the IPR was instituted. See Intelligent Bio-
`
`Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
`
`(citing 35 U.S.C. § 312(a)(3)).
`
`
`
`23
`
`
`
`Inter Partes Review of US 9,816,046
`
`
`
`
`misleading argument that does not specifically cite to Ex. 1160. Petitioner argues
`
`that “it cannot be disputed that Fricke describes cooking krill to obtain denatured
`
`product that was stored for some months, and that the resulting extract possessed
`
`1-3% free fatty acids.” Reply at 21-22. Petitioner hides the fact that the “some
`
`months” storage period is derived from the newly introduced Fricke 1986
`
`reference as discussed in the Tallon Declaration. Ex. 1086 ¶¶61-64. Dr. Tallon
`
`admits that the “exact storage time is not directly specified in Fricke (1984).” Id.,
`
`¶67. Dr. Tallon then asserts Fricke 1986 discloses that the “samples” were stored
`
`for “some months.” Id., ¶¶69-71. This analysis is severely flawed.
`
`First, Fricke 1986 contains no mention of the storage of cooked samples.
`
`Instead, the samples that were analyzed are the “quick-frozen” samples as shown
`
`in
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
