Inter Partes Review of US 9,816,046
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
`Petitioner
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`v.
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`AKER BIOMARINE ANTARCTIC AS
`Patent Owner
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`CASE IPR: IPR2020-01533
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`U.S. Patent No. 9,816,046 B2
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`PATENT OWNER’S RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1
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`RIMFROST EXHIBIT 1175 Page 0001
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`Inter Partes Review of US 9,816,046
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ........................................................................................................3 
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`I. 
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`II. 
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`INTRODUCTION AND SUMMARY OF ARGUMENT ..............................................5 
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`CLAIM CONSTRUCTION ..............................................................................................7 
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`III.  COLLATERAL ESTOPPEL DOES NOT APPLY ......................................................12 
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`V. 
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`GROUND 1 SHOULD BE DENIED ..............................................................................17 
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`A. 
`B. 
`C. 
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`Breivik II is Not Available as Prior Art .................................................................17 
`The Combined References Do Not Teach Each Element of the Claims ...............38 
`Petitioner’s Basis for Combining the References Fails .........................................45 
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`VI.  GROUND 2 SHOULD BE DENIED ..............................................................................54 
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`VII.  GROUND 3 SHOULD BE DENIED ..............................................................................55 
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`VIII.  CERTIFICATE OF COMPLIANCE ............................................................................57 
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`IX.  CONCLUSION AND PRECISE RELIEF REQUESTED ...........................................57 
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`CERTIFICATE OF SERVICE ..................................................................................................59 
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`TABLE OF AUTHORITIES
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`Cases 
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`AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1295 (Fed. Cir.
`2014).......................................................................................................................................... 13
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`Aspex Eyewear, Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013) ...................... 13
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`B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, (2015) ............................................ 13
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`Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006) .......................................................... 18
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`Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) ......................................................... 19
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`Eaton v. Evans, 204 F.3d 1094, 1097 (Fed. Cir. 2000) ................................................................ 18
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`Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) ..................................................... 19
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`Lacotte v. Thomas, 758 F.2d 611, 613 (Fed. Cir. 1985) ............................................................... 18
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`Loral Fairchild Corp. v. Matsushita Elec., 266 F.3d 1358, 1362 (Fed. Cir. 2001) ...................... 17
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (Fed. Cir. 2006) ....................................... 18
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`New Railhead Mfg. L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1297 (Fed. Cir. 2002) ............. 18
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`Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013) .. 12, 13, 15, 16
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`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007–08 (Fed. Cir. 2016)
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`Pfizer, Inc. v. Genentech, Inc., IPR2017-01488, Paper 87, at 24 (PTAB Nov. 29, 2018) ............ 19
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`Phillips v. AWH, 415 F.3d 1303, 1312 (Fed. Cir. 2005) ................................................................. 7
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`Price v. Symsek, 988 F.2d 1187, 1196 (Fed. Cir. 1993) ............................................................... 18
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`Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) ................................................................. 24
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`Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) ................................ 8
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`Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957)................................................................................ 19
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`Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012) ...... 13, 16
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`Stern v. Trs. of Columbia Univ. in NY, 434 F.3d 1375, 1378 (Fed. Cir. 2006) ............................ 17
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`Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971) ................................................................ 24
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`Tanczyn, 347 F.2d 830, 833 (C.C.P.A. 1965) ............................................................................... 19
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`United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed.
`Cir. 2015) .................................................................................................................................. 13
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`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ................................. 8
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`Wakefield, 422 F.2d 897, 164 USPQ 636 (CCPA 1970) .............................................................. 24
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`INTRODUCTION AND SUMMARY OF ARGUMENT
`Antarctic krill (Euphausia superba, hereafter referred as krill), at between
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`I.
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`300 and 500 million tons, has the largest biomass of any multicellular wild animal
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`species on the planet. The Southwest Atlantic sector of the Southern Ocean, where
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`70% of the krill population resides, is the main focus of the modern krill fishery,
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`which is managed by the Commission for the Conservation of Antarctic Marine
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`Living Resources (CCAMLR). The anfnual krill catch in the SW Atlantic sector
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`has been increasing steadily since 2010 and, in the 2019 fishing season (December
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`2018 to November 2019) it reached 390,195 tons.
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`The inventors sought to develop methods for efficient production of high-
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`quality krill oil containing phospholipids from krill caught in the South Ocean.
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`They did so by producing krill meal, a denatured krill product, from krill caught in
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`the Southern Ocean on board a ship and then extracting that krill meal after it had
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`been stored for a period of time to provide a phospholipid-rich krill oil. This
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`method is different from prior art methods which emphasized the necessity of
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`using fresh krill and on board processing. This method is claimed in U.S. Patent
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`No. 9,816,046 (the ‘046 patent) which is the subject of this Inter Partes Review.
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`This proceeding involves Petitioner’s challenge of the validity of the claims
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`of the ’046 patent based on three different but related grounds. First, Petitioner
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`alleges that claims 1-10 are obvious under pre-AIA 35 U.S.C. §103 over the
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`combination of Breivik II, Yoshitomi, Budziński, Fricke, Bottino II and Sampalis
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`I. Second, Petitioner asserts that claims 11 and 12, which depend on claim 1, are
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`obvious under pre-AIA 35 U.S.C. §103 over the combination of Breivik II,
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`Yoshitomi, Budziński, Fricke, Bottino II and Randolph. Third, Petitioner asserts
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`that claims 13-19 are obvious under pre-AIA 35 U.S.C. §103 over the combination
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`of Breivik II, Budziński, Fricke, Yoshitomi, Bottino II, Randolph and Sampalis I.
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`All three of these grounds rely on Breivik II as the lead reference which Petitioner
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`asserts as prior art under pre-AIA 35 U.S.C. § 102(e).
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`Petitioner’s asserted grounds for unpatentability should all be denied
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`because Breivik II is not available as prior art against the claims of the ’046 patent.
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`The filing date of Breivik II makes it citable only under § 102(e), which provides
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`that a published patent application qualifies as prior art only if filed before the
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`date of invention by the patent applicant. Although the U.S. provisional
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`application to which the Breivik II reference claims priority was filed before the
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`filing date of the ’046 patent, the inventors had conceived and reduced the claimed
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`invention to practice (or at least as much of the invention as is disclosed in Breivik
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`II) prior to November 16, 2006, which is the earliest possible prior art date of
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`Breivik II.
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`Given the disqualification of Breivik II as prior art, all three of Petitioner’s
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`grounds for invalidity immediately fail as those grounds each rely on Breivik II
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`both for certain claim elements as well as for motivation to combine the references.
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`Further, even if Breivik II was available as prior art, the combined
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`references fail to render the claims obvious as: 1) the combined references do not
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`teach the claim element of “extracting krill oil [or Euphausia superba oil] from
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`said krill meal that has been stored from 1 to 36 months with a polar solvent . . .”
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`and 2) Petitioner’s asserted motivation to combine the references is not supported
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`by the evidence.
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`II. CLAIM CONSTRUCTION
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`The first step in analyzing Petitioner’s grounds for unpatentability is to
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`determine the meaning of the terms in the involved claims of the ’046 patent. The
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`words of a patent claim are generally given their ordinary and customary
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`meanings, which are the meanings that would have been understood by a person of
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`ordinary skill in the art at the time of the invention. Phillips v. AWH, 415 F.3d
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`1303, 1312 (Fed. Cir. 2005). Since the instant IPR was filed after November 13,
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`2018, the Phillips claim construction standard applies.
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`The person of ordinary skill in the art is deemed to read claim terms not only
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`in the context of the claim itself but also in the context of the specification. Id. at
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`1313. Thus, in determining the ordinary and customary meanings of the claim
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`terms, the specification is “always highly relevant” and is “the primary basis for
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`construing the claims.” Id. at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc.,
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`90 F.3d 1576, 1582 (Fed. Cir. 1996) and Standard Oil Co. v. Am. Cyanamid Co.,
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`774 F.2d 448, 452 (Fed. Cir. 1985)). In addition, the prosecution history can often
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`inform the meaning of the claim language. Id. at 1317.
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`Petitioner’s proposed construction of “krill meal” must be addressed as it
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`does not encompass the ordinary and customary meaning of the term, and the
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`overbreadth of Petitioner’s construction of “krill meal” creates issue with respect to
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`to the cited prior art.
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`Petitioner construes “krill meal” to mean “processed krill with reduced water
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`content from which krill oil can be extracted.” Petition at 35-37. As explained by
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`Patent Owner’s expert, Dr. Jacek Jaczynski, this construction is overbroad as it
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`focuses on only reduced water content and ignores the ordinary and customary
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`meaning of a meal as referring to a powder formed by particle size reduction of a
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`starting material. Jaczynski Decl. (Ex. 2015) ¶¶13-15. Instead, a construction of
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`the term “krill meal” to mean “a krill powder resulting from the processing of
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`krill” is consistent with both the ordinary and customary meaning as well as usage
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`in the specification. Id.
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`As a preliminary matter, it appears that Dr. Tallon applied the wrong
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`standard for claim construction. At ¶30 of his Declaration he states, “I have been
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`informed that claim terms are interpreted according to their broadest reasonable
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`construction in light of the specification of the ‘046 Patent . . . .” Since the instant
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`IPR was filed after November 13, 2018, the broadest reasonable construction
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`standard no longer applies. Thus, his analysis (and the Petitioner’s analysis which
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`relies on the Tallon Decl.) should be given little or no weight.
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`Dr. Tallon’s analysis does not establish the plain and ordinary meaning of
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`the term “meal” as a starting point. The Cambridge English Dictionary defines
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`meal as “a substance that has been crushed to make a rough powder, especially
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`plant seeds crushed to make flour or for animal food.” Ex. 2016; See also
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`Jaczynski Decl. (Ex. 2015) ¶13. Thus, a starting material is processed to reduce
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`particle size to form a powder. This is the hallmark of a meal, including krill
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`meals. This definition is consistent with the prior art references relied on by
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`Petitioner. For example, Grantham describes krill meal as “a red to yellow free
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`flowing product, with a faint shrimp like odour and flavour.” Ex. 1032 at 0053.
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`The reference to a “free flowing product” means it is a powder. Jaczynski Decl.
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`(Ex. 2015) ¶13.
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`This plain and ordinary meaning of the term “meal” as applied to krill is
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`consistent with the usage of the term “krill meal” in the ‘046 specification. Dr.
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`Tallon provides an examination of use of the term “krill meal” in the ‘046 Patent
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`specification at ¶¶138-156 of his Declaration. In each case, a crushing or grinding
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`process is utilized, for example, via a press or screw press, which results in particle
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`size reduction. Jaczynski Decl. (Ex. 2015) ¶15. For example, the ‘046
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`specification (Example 6) describes the meal process as follows:
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`Fresh krill was pumped from the harvesting trawl directly into an indirect
`steam cooker, and heated to 90 C. Water and a small amount of oil were
`removed in a screw press before ethoxyquin (antioxidant) was added
`and the denatured meal was dried under vacuum at a temperature not
`exceeding 80 C.
`Ex. 1001 at 0041, Col. 31, l. 62-67. Example 7 then directly refers to krill meal as a
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`“food grade powder.” Id. at 0041, Col. 32, l. 15-17. The specification also
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`describes wet pressing which also is a crushing process that reduces particle size:
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`“In some embodiments, freshly caught krill is wet pressed to obtain oil and meal.”
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`Id. at 0030, Col. 10, l. 50-51. The specification also describes grinding krill: “In
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`some embodiments, the denaturation step comprises heating said fresh krill after
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`grinding.” Id. at 0027, Col. 4, l. 62-64.
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`These are the same examples from the Specification that are relied on by
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`Petitioner in its construction. See Petition at 35-37. In every instance in the ‘046
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`specification, there is a pressing, crushing or grinding step described that results in
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`particle size reduction, consistent with ordinary and customary meaning of both a
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`meal and specifically krill meal. Thus, the correct construction of the term “krill
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`meal” is “a krill powder resulting from the processing of krill.” Jaczynski Decl.
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`(Ex. 2015) ¶15.
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`Petitioner’s construction ignores this ordinary and customary usage and
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`instead refers only to reduction of water content. Jaczynski Decl. (Ex. 2015) ¶15.
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`Thus, while Petitioner may state the correct standard for claim construction in its
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`Petition at p. 13, it appears that it and its expert applied some type of “broadest
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`reasonable construction.” As discussed in more detail below, Petitioner’s incorrect
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`construction of the term “krill meal” has important implications for analysis of the
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`claims as none of the references teaches extraction of a krill oil from krill meal that
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`has been stored for from 1 to 36 months as required by the claims.
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`Finally, Petitioner construes “to destroy the activity of lipases and
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`phospholipases” as meaning “denature lipases and phospholipases.” Petition at 37-
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`38. Construction of this term is not required and in any event it should given its
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`plain and ordinary meaning. Jaczynski Decl. (Ex. 2015) ¶12.
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`III. COLLATERAL ESTOPPEL DOES NOT APPLY
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`Petitioner alleges that collateral estoppel precludes Patent Owner from
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`advancing the same patentability arguments rejected in the Final Written Decisions
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`in the following IPRs: 2017-00745, 2017-00746, 2018-00295, 2018-01178, 2018-
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`01179 and 2018-01730. Petition at 39. Petitioner does not argue in its Petition that
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`those decisions should be applied to directly invalidate the claims at issue through
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`a theory of collateral estoppel.
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`Petitioner cites to the Federal Circuit’s decision in Ohio Willow Wood for
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`the proposition that collateral estoppel “protects a party from having to litigate
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`issues that have been fully and fairly tried in a previous action and adversely
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`resolved against a party-opponent.” Petition at 38, citing Ohio Willow Wood Co. v.
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`Alps South, LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013). However, Petitioner
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`provides no analysis under Ohio Willow Wood or any other precedent to establish
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`that collateral estoppel should apply to the claims of the ‘046 patent. The lack of
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`any analysis under the applicable standards for collateral estoppel is a failure in
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`Petitioner’s burden of proof and for that reason alone collateral estoppel should not
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`be applied here. Petitioner’s assertion that the Board’s factual findings and
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`conclusions of law from the ‘877 and ‘453 decisions would be given preclusive
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`effect due to the “materially identical claim limitations and common references” is
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`simply incorrect as the prior art relied in those decisions did not include Budziński.
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`See Petition at 40. In any event, as explained in detail below, collateral estoppel
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`does not apply to the arguments advanced in this Response under the applicable
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`standards.
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`The law of the regional circuit governs the application of general collateral
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`estoppel principles. AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech,
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`Inc., 759 F.3d 1285, 1295 (Fed. Cir. 2014). “However, for any aspects that may
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`have special or unique application to patent cases, Federal Circuit precedent is
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`applicable.” Aspex Eyewear, Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed.
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`Cir. 2013). Under Federal Circuit precedent, a party is collaterally estopped from
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`relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior
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`action actually litigated and adjudged that issue; (3) the judgment in that prior
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`action necessarily required determination of the identical issue; and (4) the prior
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`action featured full representation of the estopped party. Stephen Slesinger, Inc. v.
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`Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012); United Access
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`Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed.
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`Cir. 2015). Collateral estoppel or “issue preclusion applies where the[se] ...
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`[elements] of collateral estoppel are carefully observed.” B & B Hardware, Inc. v.
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`Hargis Indus., Inc., 575 U.S. 138, (2015) (quotations omitted).
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`In the context of patent invalidity, collateral estoppel is not limited to
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`identical claims. Ohio Willow Wood, 735 F.3d at 1342. Instead, “[i]f the
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`differences between the unadjudicated patent claims and adjudicated patent claims
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`do not materially alter the question of invalidity, collateral estoppel applies.” Id.
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`(finding collateral estoppel where the patentee failed to explain how the specific
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`limitation of a “block copolymer gel” in the unadjudicated claim would change the
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`invalidity analysis of a substantially identical claim requiring a more general
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`“polymeric gel”).
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`To begin with, Petitioner acknowledges that none of the claims ruled on in
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`the previous IPRs initiated by Rimfrost against Aker contain the claim element of
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`storage of krill meal for from 1 to 36 months prior to extraction. Petition at 15
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`(“With the exception of limitations reciting storage time of 1 to 36 months, and the
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`free fatty acid and lysophospholipid contents of the recited krill extract, all other
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`claim limitations of the ‘046 patent were addressed by the Board in the Final
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`Written Decisions finding all claims of the ‘877 and ‘453 patents unpatentable.”)1
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`1 See also Petitioner’s statement in co-pending IPR2020-01532 that “[w]ith the
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`exception of requiring storage for 1-24 months, the claims of the ‘169 patent and
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`In order to address the new storage limitation, Petitioner has presented a new
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`combination of references that has not been previously considered by the Board
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`and that includes at least one additional reference - Budziński. This shows that the
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`claims are materially different from claims considered in the previous IPRs
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`because Petitioner recognized that a new combination of references was required to
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`address each element of the claims.
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`The question before the Board is not whether the additional limitation
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`renders the claim non-obvious, but whether the addition of the new limitation
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`would alter an obviousness analysis. See Ohio Willow Wood, 735 F.2d at 1343
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`(finding collateral estoppel appropriate where the plaintiff failed to explain how the
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`new limitation “changes the invalidity analysis”). In Ohio Willow Wood, the
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`Federal Circuit’s analysis focused on minor additional limitations that narrowed
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`the scope of a broader claim element– “polymeric gel” to “block copolymer gel.”
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`See Ohio Willow Wood, 735 F.2d at 1342.
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`In contrast to the claims in Ohio Willow Wood, the claims at issue in this
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`proceeding contain an entirely new limitation (extraction of krill oil from krill meal
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`the claims of the ‘877 and ‘453 patents recite virtually identical methods . . . ”).
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`IPR2020-01532 Petition at 40-41.
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`stored for from 1 to 36 months prior to extraction) that was not subject to any
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`determination by the Board in the previous IPRs. As explained in detail below in
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`the discussion of the instituted grounds, this new claim element raises new
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`questions of fact with regard to disclosures of the prior art (e.g., as discussed below
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`none of the references teach the newly added limitation) and motivation
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`(specifically why the combined references including Budziński do not provide
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`motivation to extract from a krill meal that has been stored for from 1 to 36
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`months). Thus, the new limitation materially alters the question of invalidity and
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`Ohio Willow Wood does not apply.
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`As discussed above, the Federal Circuit requires that the following factors be
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`met before collateral estoppel applies: (1) a prior action presents an identical issue;
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`(2) the prior action actually litigated and adjudged that issue; (3) the judgment in
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`that prior action necessarily required determination of the identical issue; and (4)
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`the prior action featured full representation of the estopped party. Stephen
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`Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012).
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`Here, Petitioner has provided no analysis under these factors. However, it is
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`apparent that the previous IPRs did not: 1) present an identical issue as none of the
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`claims in the patents involved in those IPRs contained the storage of krill meal for
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`from 1 to 36 months prior to extraction limitation; and 2) the actual issue of
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`whether claims containing the storage of krill meal for from 1 to 36 months prior to
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`extraction limitation are obvious was not adjudicated. Furthermore, the issue of
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`Breivik II not being prior art was not raised in the previous IPRs and the Board has
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`not adjudicated that issue. Thus, collateral estoppel does not apply to the claims at
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`issue in this IPR or the arguments raised below under the relevant analysis applied
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`by the Federal Circuit.
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`V. GROUND 1 SHOULD BE DENIED
`Petitioner asserts that Claims 1-10 of the ‘046 patent should be canceled
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`because they purportedly would have been obvious in view of the combination
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`of Breivik II, Yoshitomi, Budziński, Fricke, Bottino II and Sampalis I
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`under 35 U.S.C. § 103. (Petition at 41-57.) Petitioner is incorrect because as
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`explained below Breivik II is not available as prior art. In addition, even if
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`Breivik II were available as prior art, the cited combination of references fails
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`to make obvious the step of extracting krill oil from a krill meal stored for from
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`1 to 36 months before extraction.
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`A.
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`Breivik II is Not Available as Prior Art
`The ’046 patent claims priority through a series of continuing applications to
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`provisional applications filed in 2007 and 2008 under the pre-AIA first-to-invent
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`regime. A reference is not available as prior art against a patent under 102(e) if
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`filed after the invention date of the patentee. Pre-AIA 35 U.S.C. § 102(e); Loral
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`Inter Partes Review of US 9,816,046
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`Fairchild Corp. v. Matsushita Elec., 266 F.3d 1358, 1362 (Fed. Cir. 2001). An
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`invention is complete once it has been conceived and reduced to practice.
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`Conception refers to the formation within the mind of the inventor of a definite and
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`permanent idea of the invention, including each claim feature. Stern v. Trs. of
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`Columbia Univ. in NY, 434 F.3d 1375, 1378 (Fed. Cir. 2006).
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`The reduction to practice requirement can be satisfied by either actual or
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`constructive reduction to practice. Actual reduction to practice refers to
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`completion of a working embodiment of the invention that includes each of the
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`claim features and works for its intended purpose. Eaton v. Evans, 204 F.3d 1094,
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`1097 (Fed. Cir. 2000). An invention can be considered reduced to practice even
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`though it may later be refined or improved. New Railhead Mfg. L.L.C. v. Vermeer
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`Mfg. Co., 298 F.3d 1290, 1297 (Fed. Cir. 2002).
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`The inventor’s testimony of conception and reduction to practice must be
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`corraborated. “Sufficiency of corroboration is determined by using a ‘rule of
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`reason’ analysis, under which all pertinent evidence is examined when determining
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`the credibility of an inventor's testimony.” Medichem, S.A. v. Rolabo, S.L., 437
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`F.3d 1157, 1170 (Fed. Cir. 2006) (citations omitted). Under the rule of reason, the
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`evidence “must be considered as a whole, not individually.” Price v. Symsek, 988
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`F.2d 1187, 1196 (Fed. Cir. 1993); see also Perfect Surgical Techniques, Inc. v.
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`Inter Partes Review of US 9,816,046
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`Olympus Am., Inc., 841 F.3d 1004, 1007–08 (Fed. Cir. 2016); Brown v. Barbacid,
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`436 F.3d 1376, 1380 (Fed. Cir. 2006). Thus, an inventor’s conception can be
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`corroborated even though “no one piece of evidence in and of itself” establishes
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`that fact, Price, 988 F.2d at 1196, and even through circumstantial evidence,
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`Lacotte v. Thomas, 758 F.2d 611, 613 (Fed. Cir. 1985). At bottom, the goal of the
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`analysis is to determine “whether the inventor’s story is credible.” Fleming v.
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`Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014).
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`Furthermore, “it is not [, however,] necessary to produce an actual over-the-
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`shoulder observer. Rather, sufficient circumstantial evidence of an independent
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`nature can satisfy the corroboration requirement. Furthermore, an actual reduction
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`to practice does not require corroboration for every factual issue contested by the
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`parties.” Cooper v. Goldfarb, 154 F.3d 1321, 1330 (Fed. Cir. 1998) (internal
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`citations omitted). “[E]ach corroboration case must be decided on its own facts
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`with a view to deciding whether the evidence as a whole is persuasive.” Id. at 1331
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`(citation omitted).
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`Additionally, under controlling authority, a reference is not prior art if the
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`patentee shows priority “with respect to so much of the claimed invention as the
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`reference happens to show.” In re Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957); see
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`In re Tanczyn, 347 F.2d 830, 833 (C.C.P.A. 1965). “When [the inventor] has done
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`Inter Partes Review of US 9,816,046
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`that he has disposed of the reference.” Stempel, 241 F.2d at 759. This long-
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`established principle applies in IPRs, see Pfizer, Inc. v. Genentech, Inc., IPR2017-
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`01488, Paper 87, at 24 (PTAB Nov. 29, 2018) (patent owner need antedate only
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`“as much of the claimed invention as shown in those references”) (citing Stempel).
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`The evidence presented by inventor Dr. Snorre Tilseth (Ex. 2001 and
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`supporting Exs. 2002-2014) establishes conception and reduction to practice of the
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`claimed invention, or at least as much of the claimed invention as is disclosed in
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`Breivik II, prior to the November 16, 2006, filing date of the provisional
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`application to which Breivik II claims priority. See Ex. 2015 (Jaczynski Decl.)
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`¶¶24-29.
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`Dr. Tilseth began working for Aker Seafoods in 2005. Tilseth Decl. (Ex.
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`2001) at ¶3. Prior to beginning his work there, Aker Seafoods had obtained a
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`license from CCAMLR (Commission for the Conservation of Antarctic Marine
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`Living Resources) to harvest krill in the Antarctic in the 2004 and 2005 with the
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`ship F/T Atlantic Navigator. Id. at ¶6. Ex. 2002 documents operation of the
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`Atlantic Navigator in Antarctica by scientific observers that were aboard during
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`parts of the 2004-2005 fishing season. Id. The Atlantic Navigator was outfitted
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`with a standard compact fish meal factory where krill meal was produced by a
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`standard meal process where fresh krill is brought on board the ship, cooked,
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`processed through a decanter (which produces a small amount of a triglyceride oil)
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`and then dried and milled to provide a meal in the form of a powder. Tilseth Decl.
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`(Ex. 2001) ¶8; Ex. 2003 at 0022-23.
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`Aker Seafoods engaged Fiskeriforskning (the Norwegian Institute of
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`Fisheries and Aquaculture Research) to conduct analysis of materials such as krill
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`meal. Tilseth Decl. (Ex. 2001) ¶7. Ex. 2003 is a confidential report produced by
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`Fiskeriforskning for Aker Seafoods that analyzed krill meal produced on board the
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`Atlantic Navigator during the 2004/2005 fishing season. Ex. 2004 is the metadata
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`from Ex. 2003 that shows that the report was created and last modified on January
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`27, 2006. See also, Tilseth Decl. (Ex. 2001) ¶7.
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`After beginning work at Aker Seafoods, Dr. Tilseth proposed the idea of
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`ethanol extraction of krill oil from krill meal to the owner of the company. Tilseth
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`Decl. (Ex. 2001) ¶6. In the spring of 2006, Dr. Tilseth contacted the company
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`Fresenius Kabi to perform ethanol extraction of krill oil from krill meal based on
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`their expertise in extracting phospholipids from egg yolk. Id. at ¶9.
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`A May 2006 meeting with Fresenius Kabi concerning extraction of krill oil
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`from krill meal is corroborated by Dr. Tilseth’s electronic notes provided as Ex.
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`2005 (certified translation provided as Ex. 2006) and the metadata (Ex. 2007) from
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`Ex. 2005 which demonstrates that Ex. 2005 created on May 5, 2006, and last
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`modified on May 8, 2006. Tilseth Decl. (Ex. 2001) ¶9. These notes specifically
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`reference a test extraction of Aker’s “krill flour” or meal and indicate the intention
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`to perform a pilot scale extraction of several hundred kilograms of krill meal. Ex.
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`2006 at 0002. Further corroboration is provided by Ex. 2008, which is a draft
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`agreement prepared by Dr. Tilseth describing the relationship between Aker
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`Seafoods and Fresenius Kabi. See also Tilseth Decl. (Ex. 2001) ¶10. The metadata
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`for this draft agreement is provided as Ex. 2009 and shows that Ex. 2008 was
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`created by Dr. Tilseth on June 19, 2006, and last modified on December 8, 2006.
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