Aker Biomarine as and Enzymotec Ltd. and Enzymotec USA, Inc.,v.Neptune Technologies and Bioressources Inc.

Patent Trial and Appeal Board

Mar 23, 2015

13189714 (P.T.A.B. Mar. 23, 2015)

Trials@uspto.gov Paper 104
Tel: 571-272-7822 Entered: March 23, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
AKER BIOMARINE AS and ENZYMOTEC LTD. and
ENZYMOTEC USA, INC.,
Petitioner,

v.

NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.,
Patent Owner.
_______________

Case IPR2014-00003
1

Patent 8,278,351 B2
____________

Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

1
Case IPR2014-00556 has been joined with this proceeding.
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I. INTRODUCTION
The parties in the case are Aker Biomarine AS (“Aker”) and
Enzymotec Ltd. and Enzymotec USA, Inc. (“Enzymotec”) (collectively,
“Petitioner”), and Neptune Technologies and Bioressources, Inc. (“Patent
Owner”). Aker filed a first Petition to institute an inter partes review of
claims 1–27 (Paper 8; “Pet. I”) of Patent No. 8,278,351 B2 (Ex. 1001; “the
’351 patent”). We instituted trial as to the challenged claims on the
following grounds of unpatentability asserted by Aker:
Reference(s) Basis Claims challenged
Beaudoin
2
§ 102(b)
1, 36, 9, 12, 13, 1924,
2629, 32, 35, 36, and 4246
Fricke,
3
Bergelson,
4

Yasawa,
5
Itano,
6
and WHO
Bulletin
7

§ 103
16, 9, 12, 13, 1929, 32, 35,
36, and 4246
Decision to Institute, 18 (Paper 22 (“Dec. I”)).

2
Beaudoin et al., WO 00/23546, published April 27, 2000. Ex. 1002.
3
Fricke et al., Lipid, Sterol and Fatty Acid Composition of Antarctic Krill,
19(11) LIPIDS 821-827 (1984). Ex. 1006.
4
Lipid Biochemical Preparation, LD Bergelson (ed.), Elsevier/North-
Holland Biomedical Press (1980). Ex. 1017.
5
Yasawa et al., JP H8-231391, published September 10, 1996. The certified
translation, Japanese language document, and translation certificate for
Yasawa are provided as Exs. 1015, 1076 and 1077, respectively. We
reference Ex. 1015 in this Decision.
6
Itano Refrigerated Food Co., Ltd., Bio & High Technology Announcement
and Natural Astaxanthin & Krill Lecithin, 116. Ex. 1009.
7
WHO News and Activities, Bulletin of the World Health Organization,
73(4), pp. 547-51 (1995). Ex. 1018.
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After institution, Neptune Technologies and Bioressources, Inc.
(“Patent Owner”), filed its Patent Owner’s Response. Paper 66 (“Resp. I”).
Within a month of our Decision to Institute in the first case,
Enzymotec filed a second Petition and Motion for Joinder. IPR2014-00556,
Paper 1 (“Pet. II”), Paper 4. We then instituted inter partes review of the
’351 patent in IPR2014-00556 based on the second Petition, and granted
Enzymotec’s Motion to join IPR2014-00556 with IPR2014-00003. Paper 72
(“Dec. II”). In IPR2014-00556, we instituted trial on the identical alleged
grounds of unpatentability previously instituted in IPR2014-00003, and in
addition, on the alleged anticipation of claims 2 and 25 over Beaudoin.
8
Id.
Patent Owner filed its second Patent Owner’s Response to address the added
ground involving claims 2 and 25. Paper 77 (“Resp. II”).
Petitioner filed a Reply, which was responsive to both of the Patent
Owner Responses. Paper 84 (“Reply”). Patent Owner did not file a motion
to amend claims.
Petitioner relies upon the declarations of Drs. Van Breemen (“Van
Breemen” Ex. 1040), Brenna (“Brenna” Ex. 1042) Storrø (“Storrø” Ex.
1044), Budge (“Budge” Ex. 1041); Welch (“Welch” Ex. 1043); Moore
(“Moore” Ex. 1044), Lee (“Lee” Ex. 1045), Haugsgjerd (“Haugsgjerd” Ex.
1047, Ex. 1048, and Ex. 1080), and Gundersen (“Gundersen” Ex. 1049 and
Ex. 1050).

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In this paper, we refer to solely: Paper 66, Patent Owner’s Response
(“Resp. I”); Paper 84, the Reply filed by Aker; and Paper 22, our Decision to
Institute in IPR2014-00003. To the extent that there are differences in
arguments and issues raised in the joined case, IPR2014-00556, we refer to
the second Petition filed by Enzymotec (IPR2014-00556, Paper 1, “Pet. II”)
and Paper 72, our Decision to Institute in IPR2014-00556.
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Patent Owner relies upon the declaration of Dr. Jacek Jaczynski
(“Jaczynski Declaration”) (Ex. 2059) in support of its Response.
Patent Owner filed a Motion to Exclude certain of Petitioner’s
evidence. Paper 89. Petitioner filed an Opposition (Paper 95), and Patent
Owner filed a Reply. Paper 97.
Oral argument was conducted on October 31, 2014. A transcript is
entered as Paper 103 (“Tr.”).
This Final Written Decision addresses challenges to the patentability
of claims 16, 9, 12, 13, 1929, 32, 35, 36, and 4246. Petitioner has
established by a preponderance of the evidence that claims 14, 6, 9, 12, 13,
1927, 29, 32, 35, 36, and 4246 of the ’351 patent are unpatentable.
Petitioner has failed to demonstrate by a preponderance of the evidence that
claims 5 and 28 of the ’351 patent are unpatentable.
A. Related Matters
The parties represent that the ’351 patent is the subject of patent
infringement lawsuits in the U.S. District Court for the District of Delaware:
Neptune Technologies and Bioressources Inc., v. Aker Biomarine ASA, et
al., No. 12-cv-1252 (filed October 2, 2012) and Neptune Technologies and
Bioressources Inc., v. Enzymotec Limited, et al., No. 12-cv-1253 (filed
October 2, 2012). Pet. I, 2; Paper 10.
The parties represent that the ’351 patent is the subject of an
International Trade Commission investigation, entitled Certain Omega-3
Extracts from Marine or Aquatic Biomass and Products Containing the
Same, Investigation No. 337-TA-877. Id.
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The parties represent that the ’351 patent is the subject of an Ex Parte
Reexamination, Control No. 90/012,698. Id.
Petitioner Aker represents that the ’351 patent is a continuation of
U.S. Pat. 8,030,348 (the “’348 patent”; Ex. 1069), which is currently subject
to an Inter Partes Reexamination, Control No. 95/001,774. Pet. I, 2. The
’348 patent is also the subject a patent infringement lawsuit filed by Neptune
Bioressources & Technologies against Aker Biomarine in the United States
District Court of Delaware (1:11-cv-00894-GMS). Id. The ’351 patent (Ex.
1001)
B. The ’351 patent (Ex. 1001)
Phospholipids are made up of two chains of fatty acids attached to a
chemical backbone made up of phosphoric acid, glycerol and nitrogenous
bases (e.g., choline). Ex. 1001, 4:41–56. Phospholipids having choline as
the nitrogenous base are referred to as phosphatidylcholines. Id.
The ’351 patent relates to certain phospholipids and compositions
containing phospholipids. The ’351 patent discloses a phospholipid
including two fatty acids chains of eicosapentanoic acid (“EPA”) and
docosahexanoic acid (“DHA”) simultaneously. The general formula for the
phospholipid is:
,
wherein X represents a moiety normally found in a phospholipid such as
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phosphatidylcholine (PC), phosphatidylethanolamine (PE) and
phosphatidylinositol (PI). Id. at 2:46–3:2, 21:1–25.
The phospholipids are derived from natural marine or aquatic sources.
Id. at 1:1922. Krill is described as the preferred source of the disclosed
phospholipids, which includes krill found in the Antarctic Ocean (Euphasia
superba) and in the Pacific Ocean (Euphasia pacifica). Id. at 15:821. The
’351 patent describes the preparation of krill extracts that preferably contain
40% weight per weight (w/w) phospholipid. Id. at 15:4245.
Polyunsaturated fatty acids, in particular omega-3 fatty acids, preferably
make up at least 15% w/w of the total lipids in the extract. Id. at 16:4751.
DHA or EPA may account for at least 32% w/w of the total lipid content of
the extract. Id. at 16:5154.
C. Challenged Claims
Claims 1 and 24 are the only independent claims among the
challenged claims, and are reproduced below:
1. A krill extract comprising:
a phospholipid of the general formula (I),

wherein R1 and R2, each together with the respective
carboxyl groups to which each is attached, each independently
represents a docosahexaenoic acid (DHA) or an
eicosapentanoic acid (EPA) residue, and X is —CH2CH2NH3,
—CH2CH2N(CH3)3, or
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and wherein the extract is suitable for human
consumption.

24. A capsule, tablet, solution, syrup, or suspension
comprising a krill extract comprising:
a phospholipid of the general formula (I),

wherein R1 and R2, each together with the respective
carboxyl groups to which each is attached, each independently
represents a docosahexaenoic acid (DHA) or an
eicosapentanoic acid (EPA) residue, and X is —CH2CH2NH3,
—CH2CH2N(CH3)3, or

and wherein the extract is suitable for human
consumption.

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Claims 26, 9, 12, 13, and 1923 depend from claim 1, either directly
or indirectly. Claims 2529, 32, 35, 36, and 4246 depend from claim 24,
either directly or indirectly.
II. DISCUSSION
A. Claim Interpretation
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012); In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 448667,
at *5–*8 (Fed. Cir. Feb. 4, 2015). Claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
We expressly interpret below only those claim terms that require
analysis to resolve arguments related to the patentability of the challenged
claims.
1. Construction of the phrase “suitable for human
consumption”
Petitioner suggests that “suitable for consumption” broadly covers
“any form of consumption by a human (e.g., oral or topical administration).”
Pet. I, 9.
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Patent Owner contends that any interpretation of “suitable for human
consumption” must cover extracts intended for oral ingestion. Resp. I, 910.
To support this argument, Patent Owner cites to those passages of the ’351
patent that disclose compositions intended for oral consumption such as
foods, beverages, energy bars, sports drinks, and supplements. Id. (citing
Ex. 1001, 20:34-36, 20:42-57, and Examples 2 and 3).
Patent Owner’s analysis does not address the disclosure of “topical
cosmetic products” in the ’351 patent. See e.g., Ex. 1001, 20:3841 (“[T]the
phospholipid extract of the invention is also useful in cosmetic preparations,
e.g., moisturizing creams, sun-block products and other topical cosmetic
products as known in the art.”). In light of that disclosure in the ’351 patent,
we agree with Petitioner that “suitable for consumption” broadly covers any
form of human consumption (e.g., oral or topical administration).
2. Construction of the phrase “capsule, tablet, solution, syrup,
or suspension”
Under a broadest reasonable interpretation, words of the claim must
be given their plain meaning unless the plain meaning is inconsistent with
the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Limitations from the specification are not to be read into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
(“Though understanding the claim language may be aided by explanations
contained in the written description, it is important not to import into a claim
limitations that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”); cf. Merck
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& Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)
(reversing the district court’s construction of the term “about” because the
interpretation was inconsistent with the specification).
Patent Owner contends that that recitation of “solution, syrup, or
suspension” in claim 24 refers to liquid preparations for oral administration.
Resp. I, 14 (citing Ex. 2059 ¶ 40; Ex. 2037, 245:20246:2; Ex. 1001,
20:1022 (“Liquid preparations for oral administration may take the form of,
for example, solutions, syrups or suspensions . . . .”). Although we agree
that that recitation of “solution, syrup, or suspension” encompasses liquid
preparations for oral administration, we decline to interpret the phrase to be
limited to liquid preparations for oral administration. Claim 24 recites, for
example, solutions comprising a krill extract that are suitable for human
consumption. The claim is absent any language that limits “consumption” to
oral consumption and we must take care to not import limitations from the
specification into the claim. Superguide Corp., 358 F.3d at 875.
3. Construction of the term “about”
The term “about” is defined in the ’351 patent as follows:
As used herein and in the claims, where the term “about” is
used with a numerical value, the numerical value may vary by
at least ±50%. Preferably, the variation will be ±40% or ±30%
and more preferably ±20% or ±10%. Even more preferred
variations are in the range ±5%, ±4%, ±3% or ±2%. Most
preferably, the variation is in the range of ±1%.
Ex. 1001, 21:6163.
Patent Owner contends that “±50%” would not be understood by a
person of ordinary skill in the art to mean plus or minus an absolute value of
50%, because it would be nonsensical as it would include negative values for
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lower numerical numbers such as 5% (i.e., indicating a range of -45% to
55%). Resp. I, 1112 (citing Ex. 2059 ¶ 37). Rather, a person of ordinary
skill in the art would have interpreted “±50%” to be determined from the
numerical value used with the variation. Id. Thus, for example, about 5% ±
50% means plus or minus 50% of 5%, and therefore indicates a range of
2.5% (5% minus 2.5%) to 7.5% (5% plus 2.5%). Id.
Petitioner contends that the broadest reasonable interpretation of
“about,” in view of the express definition set forth in the specification, is to
read “±50%” as an absolute value. Reply 34. Petitioner contends that
negative values would not render such an interpretation nonsensical as the
term “about” is used in the context of amounts of compositional elements,
which are not negative. Id. Thus, for example, claims 5 and 28 require free
fatty acids and therefore would not encompass a negative amount.
Upon consideration of the claims, Specification, other evidence, and
the arguments summarized above, we conclude that a person of ordinary
skill in the art would have interpreted “±50%” in the Specification, and thus
the broadest reasonable interpretation of “about” in claims (lacking any
other definition in the claims) in view of the Specification, to mean ±50% as
determined from the numerical value used with the variation. Ex. 2059 ¶ 37.
Thus, for example, “about 5% w/w” in claim 5 refers to a range of 2.5% to
7.5% w/w.
Patent Owner’s proposed claim construction does not address the
presence of the phrase “at least” in the express definition of the term
“about,” which provides that “the numerical value may vary by at least
±50%.” Ex. 1001, 21:6163. In this regard, we read the phrase “at least
50%” in the context of the entire definition of the term “about,” set forth in
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the above paragraph, to mean ±50%, but may be less if indicated otherwise
(e.g., ±40% or ±30%) %) in the claim. Thus, if “about” is defined in a claim
with a particular percentage, that percentage is determined from the
numerical value used with the variation. For example, “about 45% w/w,
wherein about represents ±20%” in claim 3 refers to the range of 36% to
54% w/w. As another example, claim 7 recites that the “extract further
comprises polyunsaturated fatty acids which comprise at least 40% w/w of
the lipids in the extract;” the “at least 40%” represents 40% or more.
B. The Prior Art
a. Summary of Beaudoin (Ex. 1002)
Beaudoin relates to the extraction of lipid fractions from marine and
aquatic animals such as krill. Ex. 1002, 1:56. Lipids are extracted from
freshly collected marine and aquatic material with a ketone, such as acetone.
Id. at 4:2930. Beaudoin discloses that krill lipid fractions have various
uses, including medical and nutritional applications. Id. at 1:1126.
Beaudoin provides a description of the general extraction method used
to prepare extracts from marine and aquatic animal material. Id. at 5:21–
6:20. Beaudoin discloses that the starting material is subjected to acetone
extraction, under inert atmosphere, and at a temperature of about 5°C or less
for about two hours, and preferably overnight. Id. Table 19 of Beaudoin is
reproduced below.
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Id. at 28:1–36. Table 19 is disclosed as providing the suggested procedure
and optimal conditions for lipid extraction of aquatic animal tissues. Id.
Beaudoin discloses the preparation of krill oil using various solvents.
Id. at 8:419; see also id. at 21:3955 (Table 12). The characteristics of
certain lipid fractions of the krill oil were analyzed and the results are
provided in Table 13 of Beaudoin. Id. at 22. In the paragraph summarizing
Table 13, Beaudoin discloses that the krill oil fractions were heated to about
125°C for about 15 minutes to remove traces of solvents. Id. at 10:620.
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As stated in the reference, the inventor of Beaudoin, Dr. Adrien
Beaudoin, ingested lipid fractions of krill, and no side effect profile was
observed. Id. at 12:1314.
b. Summary of Fricke (Ex. 1006)
Fricke discloses the preparation of lipid extractions from Antarctic
krill (E. superba). Ex. 1006, 821. Table 1 of Fricke is reproduced below.

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Id. at 822 (Table 1). Table 1 discloses the total lipid content and the lipid
composition data of two krill samples obtained from krill caught in
December 1977 and March 1981. Id.
Table 6 of Fricke is reproduced below.

Id. at 826 (Table 6). Table 6 discloses the fatty acid positional analysis in
PC and PE detected in the December 1977 E. superba sample. Id.
c. Summary of Itano (Ex. 1009)
Itano describes the nutritional value of krill extracts. Ex. 1009, 715.
Specifically, Itano discloses as follows:
Phospholipid, a structural component of organic membranes,
contributes to enzyme- activation and is said to be effective in
lowering the concentration of cholesterol in human blood.
Krill lecithin (phospholipid found in krill) is more effective in
decomposing peroxides than ordinary soybean or
vitellinephospholipid, and is equally effective in lowering
cholesterol levels. A further characteristic of krill lecithin that
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has been the focus of considerable attention in recent years is
the high content of the highly unsaturated fatty acids, EPA
(20:5) and DHA (22:6), both of which are considered to be
effective in preventing and treating adult diseases such as
myocardial infarction and thrombosis.
Itano’s krill lecithin has the potential to make maximum use of
these Characteristics through application to promising health
foods and “functional foods.”
Id. at 15.
d. Summary of Yasawa (Ex.1015)
Yasawa discloses the administration of DHA for improving dementia
symptoms. Ex. 1015, Abstract. Yasawa discloses the use of krill oil as a
carrier for DHA. Specifically, Yasawa discloses as follows:
The DHA used in the present invention is an isolated acid, and
refers to salt, ester, glyceride, phospholipids, choline
compounds, ascorbic acid compounds, amino acid compounds.
As for the oil that includes the DHA, an inclusion ratio of 10%
or more DHA (as an isolated acid) within general fatty acids.
As an example of such an oil, the fish oil extracted from blue
backed fish such as Japanese pilchard, mackerel, horse
mackerel, salmon, and Pacific saury, the fish oil from large
ocean fish eye oil, such as that of the tuna or the shipjack tuna,
oil coming from microorganisms, krill oil, and oil from
industrial products extracted from the livers of Pacific cod and
dolphins.
Id. ¶ 8.
e. Summary of Bergelson (Ex. 1017)
Bergelson discloses techniques for the preparing lipid extracts from
natural sources using various solvents, such as chloroform and methanol.
Ex. 1017, 24. Bergelson discloses to remove solvent from lipid extracts by
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rotary evaporation using mild conditions (e.g., 35° C) or under nitrogen to
avoid auto-oxidation. Id. at 1011.
f. Summary of WHO Bulletin (Ex. 1018)
The WHO Bulletin describes the nutritional value of Antarctic krill
(Euphausia superba). Ex. 1018, 551. The WHO Bulletin identifies krill as
a source of EPA, DHA, zinc, and selenium. Id.
C. Analysis
1. Anticipation of Claims 1, 46, 9, 12, 13, 1924, 2729, 32,
35, 36, and 4246 by Beaudoin (Ex. 1002)
a. Claims 1 and 24
Claims 1 and 24 are directed to a krill extract and solution,
respectively, containing a phospholipid of the general formula (I) that is
suitable for human consumption. Petitioner contends that Beaudoin
discloses lipid extracts from krill that necessarily contain the phospholipids
recited in claims 1 and 24. Pet. I, 1519. Although Beaudoin does not
identify the lipid composition of the E. pacifica krill extracts, Petitioner
provides extensive declaration evidence, related to the reproduction and
testing of krill extracts made according to the disclosure of Beaudoin, to
show that the E. pacifica krill extracts disclosed in Beaudoin necessarily
contained the claimed phospholipids. Van Breemen (Ex. 1040) ¶¶ 7385,
9398; Budge (Ex. 1041) ¶¶ 710; Haugsgjerd (Ex. 1048) ¶¶ 25; Lee (Ex.
1045), Table 7. Krill extract samples were prepared by Dr. Budge and Dr.
Haugsgjerd and certain tests on the krill extract samples were performed by
Drs. Lee and van Breeman. Id. The Van Breemen Declaration, in
particular, provides mass spectrometry evidence that E. pacifica krill acetone
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extracts contain PC-EPA/EPA, PC-DHA/DHA, and PC-EPA/DHA. Ex.
1040 ¶¶ 7385, 9398.
With regard to the suitability-for-human-consumption element of
claims 1 and 24, Beaudoin discloses that extract fractions were consumed
with no side effect. Ex. 1002, 12:1314.
With regard to the recitation of a krill solution in claim 24, Beaudoin
krill oil extracts are solutions encompassed by claim 24, as the
phospholipids and other components are dissolved in the extracts. Ex. 1042
¶ 202.
Patent Owner argues that Beaudoin fails to disclose expressly all
elements of any patented claims. This argument is premised on the
understanding that Beaudoin requires a heating step to obtain krill extracts.
Resp. I, 1724. In this regard, Patent Owner contends that “the testimony of
Dr. Jaczynski, Dr. Budge, and Dr. Brenna makes clear that the heating step
is a required, or at least ‘optional’, part of Beaudoin’s process.” Id. at 22.
Patent Owner further contends that:
Dr. Budge clarified that while Table 19 does not recite the
heating step, Beaudoin’s heating procedure is a “postextraction
step,” not a part of the extraction procedure itself. Dr.
Jaczynski concurred with Dr. Budge’s analysis, testifying that
one of skill would view the heating step as a post-extraction
step required to refine the oil, and therefore not expect to find it
in the “optimal” extraction steps summarized in Table 19.
Resp. I, 18 (citing Ex. 2039, 154:20155:11, 90:2091:3; Ex. 2059 ¶¶ 55–
56). Patent Owner contends also that “the heating step is not an alternate
embodiment that differs from the ‘optimal’ extraction method of Table 19; it
is a required post-extraction step of Beaudoin’s method.” Id. (citing Ex.
2059 ¶ 62; Ex. 2038, 200:29; Ex. 2028, 1).
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Patent Owner contends that this heating step distinguishes Beaudoin
from the ’351 patent because the “heating step would result in both heat-
induced and acid-induced hydrolysis due to the high level of water and free
fatty acids in Beaudoin’s extracts, as disclosed in Tables 13 and 14.” Id. at
2223 (citing Ex. 2059 ¶ 61). Patent Owner further contends that the
heating step would oxidize and degrade EPA and DHA present in the extract
into a variety of undesirable intermediate by-products. Id. at 23 (citing Ex.
2059 ¶ 61).
Patent Owner contends that because Dr. Budge and Dr. Haugsgjerd do
not perform the heating step properly according to the extraction process
disclosed in Beaudoin, their attempts to recreate samples of the krill extract
obtained by Beaudoin fail. Resp. I, 2629.
Patent Owner further contends that the claimed phospholipid was not
detected in all heated and unheated recreation samples. Id.
We first address the question of whether the extraction process
disclosed in Beaudoin requires a heating step. We find it does not. The only
mention of a heating step in Beaudoin is made in conjunction with
compositional analysis of the extracts. Ex. 1002, 10:620. That method
differed from methods used to prepare the krill extracts in the first instance,
before any preparation of the sample for analysis (to be analyzed). For
example, Beaudoin expressly discloses that the krill extracts were purified
by standard techniques, such as filtration and evaporation. Ex 1002, 6:413,
Furthermore, Table 19 of Beaudoin, entitled “Optimal Conditions for Lipid
Extraction of Aquatic Animal Tissue,” summarizes the steps involved in a
lipid extraction process, and does not provide for a heating step. Id. at 28.
Rather, Table 19 suggests the use of an organic solvent resistant filter for the
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filtration step of the process. Id. Accordingly, we are not persuaded by
Patent Owner’s arguments or the testimony of Dr. Jaczynski that Beaudoin
requires a heating step.
As we are not persuaded that the Beaudoin extraction process requires
a heating step, we conclude that the adequacy of the heating steps in the
preparation of test samples is not relevant to the analysis of whether or not
the Beaudoin extracts prepared by either the disclosed general extraction
method or the optimal extraction method inherently comprise the claimed
phospholipids. The preponderance of evidence on the record suggests that
the E. pacifica krill extracts disclosed in Beaudoin necessarily contained the
claimed phospholipids. Ex. 1040 ¶¶ 7385, 9398
Moreover, even if we were to agree that Beaudoin requires a post-
extraction heating step to “refine the oil,” such a conclusion would not
render the claims patentable over Beaudoin. Resp. I, 18. An intermediate
product can anticipate a claimed product even if the intermediate product is
merely a stage in the final production. In re Mullin, 481 F.2d 1333,
133536 (CCPA 1973) (citing In re Herbert, 461 F.2d 1390, 1394 (CCPA
1972)). In that regard, Patent Owner does not contend that the unheated
extraction product produced by the Beaudoin extraction process is
distinguishable from a product encompassed by the claims. Resp. I, 1731.
Finally, Patent Owner contends that Beaudoin does not disclose an
extract “suitable for human consumption” as required by claims 1 and 24.
Id. at 3136. We are not persuaded. Beaudoin expressly discloses that the
krill extracts were purified by standard techniques, such as filtration and
evaporation (Ex 1002, 6:4-13, 28 (Table 19), and consumed by a human (id.
at 12:13-14). We are not persuaded that the evidence relied on by Patent
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Owner supports a finding that the amounts of solvent remaining after
removal efforts renders the extracts unsuitable for human consumption in
any form. As discussed above, we decline to interpret the phrase “suitable
for human consumption” to require oral ingestion.
In view of the above, we conclude that Petitioner has established by a
preponderance of the evidence that Beaudoin anticipates claims 1 and 24 of
the ’351 patent.
a. Claims 2, 3, 25, and 26
Dependent claims 2 and 25 require the claimed extract or solution to
comprise a total phospholipid concentration in an amount of about 40%
w/w, wherein “about represents ±10%.” We interpret claims 2 and 25 to
recite a total phospholipid concentration range of 36% to 44% w/w.
Dependent claims 3 and 26 require the claimed extract or solution to
have a total phospholipid concentration in an amount of about 45% w/w,
wherein about represents ±20%. We interpret claims 3 and 26 to recite a
total phospholipid concentration range of 36% to 54% w/w.
Petitioner contends that Beaudoin discloses 54.1±6.1% phospholipids
and polar material w/w in Fraction I extracts, which falls within or touches
the claimed ranges. Pet. II, 1819 (citing Ex. 1002, 23 (Table 14)).
Beaudoin’s description of concentration percentages of “[p]hospholipids or
other polar material” in Table 14, however, does not disclose explicitly a
total phospholipid concentration, as recited in the challenged claims. Rather,
Table 14 in Beaudoin describes percentages, in krill oil Fractions I and II, of
material having phospholipids (at some undisclosed concentration) plus
“other polar material” (at some undisclosed concentration). Thus, Petitioner
does not explain sufficiently in its Petition how one can ascertain the total
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phospholipid concentration of Fraction I by looking at Table 14 or elsewhere
in Beaudoin.
Petitioner further directs our attention to the testimony of Patent
Owner’s declarant, Dr. Yeboah. Id. at 19. Petitioner contends that Dr.
Yeboah has explained that the Beaudoin extracts tested by Dr. White contain
about 40% phospholipids. Id. (citing Ex. 1054 ¶ 36). Dr. Yeboah, however,
makes no such statement in the cited paragraph. Rather, in the passage
relied on by Petitioner, Dr. Yeboah refers to general teachings in the
scientific literature that discuss the phospholipid content of oil extracted
from E. superba, which is not the same species of krill examined in
Beaudoin. Ex. 1054, n. 7. Accordingly, we do not consider the statement of
Dr. Yeboah to be material to the phospholipid concentration of the krill oil
compositions disclosed by Beaudoin.
Petitioner also relies on declarations from Drs. Budge, Moore, and
Brenna to demonstrate that the E. pacifica krill extracts disclosed in
Beaudoin necessarily contained the phospholipids concentrations recited in
claims 2, 3, 25 and 26. Pet. II, 1819 (citing Budge (Ex. 1041) ¶ 10; Moore
(Ex 1044) at Exhibit A, Table 11; Brenna (Ex. 1042) ¶¶ 18081). Dr. Budge
testifies that he prepared acetone extracts of E. pacifica krill following the
method of Beaudoin in all relevant steps, and sent the samples to Dr. Moore.
Ex. 1041, 4–7 (citing Ex. 1002, 5–6, Table 19). Dr. Moore conducted
compositional analysis on the samples. Ex. 1044. The results obtained by
Dr. Moore indicated that the unheated E. pacifica krill extracts prepared by
Dr. Budge (SB1-8/19/2013-BEA-P0, SB5-8/19/2013-BEA-P1, and SB9-
8/19/2013-BEA-P2) contained phospholipids concentrations of 31.02 ± 0.07
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%, 31.51 ± 0.12 %, and 44.40 ± 0.48 %. Thus, only one of the three
samples fell within the ranges recited in claims 2, 3, 25 and 26.
Claims are not inherently anticipated where the prior art process
occasionally yields the claimed element. In re Crish, 393 F.3d 1253, 1259
(Fed. Cir. 2004) (citing Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047
(Fed. Cir. 1995)). Thus, the evidence before us does not persuaded us that
the Beaudoin samples inherently, i.e., necessarily, contained the
phospholipid w/w percentages recited in claims 2, 3, 25, and 26.
In view of the above, we conclude that Petitioner has failed to
establish that Beaudoin anticipates claims 2, 3, 25 and 26 of the ’351 patent.
b. Claims 4 and 27
Dependent claims 4 and 27 require the claimed extract or solution to
have an additional lipid, such as a free fatty acid. In its Response, Patent
Owner does not address specifically the merits of Petitioner’s proposed
ground with regard to claims 4 and 27.
As Petitioner notes, the Beaudoin extracts contain free fatty acids at a
concentration of 23.7 ±1.1% and 20.3±0.3%. Pet. I, 20; Ex. 1002, 23 (Table
14). Accordingly, we find that the preponderance of evidence shows that
Beaudoin discloses the elements of claims 4 and 27.
In view of the above, we conclude that Petitioner has established by a
preponderance of the evidence that Beaudoin anticipates claims 4 and 27 of
the ’351 patent.
a. Claims 5 and 28
Dependent claims 5 and 28 require a concentration of free fatty acids
of about 5% w/w of the lipids in the recited krill extract. As Petitioner notes,
the Beaudoin extracts contain free fatty acids at a concentration of 23.7
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±1.1% and 20.3 ±0.3%. Pet. I, 20; Ex. 1002, 23 (Table 14). Petitioner
contends that 23.7 ±1.1% is within the range of “about 5%,” as defined in
the ’351 patent. Pet. I, 20.
Patent Owner contends that a person of skill in the art would interpret
“about 5%” as used in claims 5 and 28 to refer to 2.57.5% w/w, and thus,
Beaudoin discloses extracts having free fatty acids concentrations outside of
the claimed range. Resp. I, 3637.
Petitioner responds that Patent Owner’s expert, Dr. Jaczynski,
testified that a phospholipid concentration of 40% or 45% would correspond
to free fatty acid levels of 2.5–7.5% w/w. Reply 1112; Ex. 1097, 322:8–
16, 285:20–286:7. We have reviewed the cited portions of Dr. Jaczynski’s
testimony, and are not persuaded that Dr. Jaczynski stated that a
phospholipid concentration of 40% or 45% would correspond to free fatty
acid levels of 2.5–7.5% w/w. Dr. Jaczynski may have agreed to a general
relationship between phospholipid concentration and free fatty acid levels,
but the evidence fails to inform us of the specific relationship, which is
necessary to support a conclusion that a phospholipid concentration of 40%
or 45% corresponds to free fatty acid levels of 2.5–7.5% w/w.
As noted above, we interpret “about 5%” as used in claims 5 and 28 to
indicate a range of 2.57.5% w/w. Beaudoin discloses extracts having free
fatty acids concentrations of 23.7 ±1.1% and 20.3 ±0.3%, which are outside
of the claimed range. Accordingly, we conclude that Petitioner has failed to
establish that Beaudoin anticipates the subject matter of claims 5 and 28.
b. Claims 6, 9, 29, and 32
Dependent claims 6 and 29 require the claimed extract or solution to
have polyunsaturated fatty acids (PUFAs) at a concentration of at least 15%
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w/w. Dependent claims 9 and 32 require the PUFAs to be omega-3 fatty
acids.
In its Response, Patent Owner does not address specifically the merits
of Petitioner’s proposed ground with regard to claims 6, 9, 29, and 32.
As Petitioner notes, Beaudoin discloses that its extracts contain 54.4%
PUFAs, a portion of which are omega-3 fatty acids. Pet I, 21; Ex. 1002,
2324 (Table 15). Accordingly, Beaudoin discloses the elements of claim 6,
9, 29, and 32.
In view of the above, we conclude that Petitioner has established
sufficiently that Beaudoin anticipates claims 6, 9, 29, and 32 of the ’351
patent.
c. Claims 12, 13, 35, and 36
Dependent claims 12 and 35 require the claimed extract or solution to
comprise a metal. Dependent claims 13 and 36 require the metal to be zinc,
selenium, or a mixture thereof. Petitioner relies on testimony from Drs.
Brenna, Budge, and Lee to demonstrate that E. pacifica extracts inherently
contain metal such as zinc. Pet. I, 21 (citing Ex. 1042 ¶¶ 191192;
Ex. 1045, Exhibit A (Table 7)). Dr. Lee confirmed the presence of zinc in
the unheated sample of an E. pacifica acetone extract prepared by Dr.
Budge. Ex. 1045, Exhibit A (Sample “S6,” corresponding to sample “SB2
8/19/2013 BEA-P0” prepared by Dr. Budge (Ex. 1041)).
In its Response, Patent Owner does not address specifically the merits
of Petitioner’s proposed ground with regard to claims 12, 13, 35, and 36.
In view of the above, we find that the preponderance of evidence of
record shows that Beaudoin discloses the elements of claims 12, 13, 35, and
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36. Accordingly, we conclude that Petitioner has established sufficiently
that Beaudoin anticipates claims 12, 13, 35, and 36 of the ’351 patent.
d. Claims 19, 20, 21, 42, 43, and 44
Dependent claims 19, 20, 21, 42, 43, and 44 require the claimed
extract to have PC-EPA/DHA (claims 19 and 42), PC-EPA/EPA (claims 20
and 43), and PC-DHA/DHA (claims 21 and 44). Petitioner relies on
testimony from Drs. Brenna, Haugsgjerd, and Van Breemen to demonstrate
that E. pacifica extracts inherently contain the recited EPA and DHA
species. Pet. I, 22. Dr. Haugsgjerd prepared acetone extractions of E.
pacifica and sent the samples to Dr. Van Breemen, of the University of
Illinois, for analysis. Ex. 1048 ¶¶ 23. Petitioner contends that Dr. Van
Breemen detected the presence of all of the species (PC-EPA/EPA, PC-
DHA/DHA, and PC-EPA-DHA) in the tested E. pacifica extracts. Pet. I, 22;
Ex. 1040 ¶¶ 57, 73, 93.
In its Response, Patent Owner does not address specifically the merits
of Petitioner’s proposed ground with regard to claims 19, 20, 21, 42, 43, and
44.
In view of the above, we find that the preponderance of evidence on
record shows that Beaudoin discloses the elements of claims 19, 20, 21, 42,
43, and 44. Accordingly, we conclude that Petitioner has established
sufficiently that Beaudoin anticipates claims 19, 20, 21, 42, 43, and 44 of the
’351 patent.
e. Claims 22, 23, 45, and 46
Dependent claims 22, 23, 45, and 46 require the claimed extract to
have an antioxidant such as astaxanthin. In its Response, Patent Owner does
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not address specifically the merits of Petitioner’s proposed ground with
regard to claims 22, 23, 45, and 46.
As Petitioner notes, Beaudoin expressly discloses that the extracts
described in that reference contain astaxanthin. Pet. I, 22; Ex. 1002, 27
(Table 18). Accordingly, the preponderance of evidence on record shows
that Beaudoin discloses the elements of claims 22, 23, 45, and 46.
In view of the above, we conclude that Petitioner has established
sufficiently that Beaudoin anticipates claims 22, 23, 45, and 46 of the ’351
patent.
2. Obviousness of Claims 16, 9, 12, 13, 1929, 32, 35, 36,
and 4246 Over the Combination of Fricke (Ex. 1006),
Bergelson (Ex. 1017), Yasawa (Ex.1015), Itano (Ex. 1009),
and the WHO Bulletin (Ex. 1018)
a. Claims 1, 19, 20, 21, 24, 42, 43, and 44
Claims 1 and 24 are directed to a krill extract and solution,
respectively, containing a phospholipid of the general formula (I) that is
suitable for human consumption. Dependent claims 1921 and 4244
require the claimed extract to have PC-EPA/DHA (claims 19 and 42), PC-
EPA/EPA (claims 20 and 43) and PC-DHA/DHA (claims 21 and 44). None
of claims 1, 19, 20, 21, 24, 42, 43, and 44 require a minimal concentration of
the recited phospholipid to be present in the krill extract or solution.
Fricke prepared lipid extracts from E. superba, an Antarctic krill,
according to the Folch method. Ex. 1006, 821822, Table 1. The Folch
method uses chloroform and methanol as solvents. Ex. 1006, 821.
The Van Breemen Declaration summarizes the results of a
compositional analysis of E. superba krill extracts. The data shows that PC-
EPA/EPA, PC-DHA/DHA, and PC-EPA/DHA are found in certain E.
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superba krill extracts (i.e., acetone extracts, ethanol extracts, and ethyl
acetate extracts) and thus establishes E. superba krill as a source of PC-
EPA/EPA, PC-DHA/DHA, and PC-EPA/DHA. Ex. 1040 ¶¶ 7385, 9398.
Dr. Van Breemen did not test a sample prepared using the Folch method,
which is an extraction method using chloroform and methanol used in
Fricke. Nonetheless, the evidence of record establishes that the Folch
method is “considered the classic and most reliable means for quantitatively
extracting lipids” (Ex. 1105, 1283) and thus capable of extracting
phospholipids from E. superba krill, which, in view of the Van Breemen
Declaration, inherently contain PC-EPA/EPA, PC-DHA/DHA, and PC-
EPA/DHA. Accordingly, on this record, we find that the preponderance of
evidence establishes that the E. superba krill extracts disclosed in Fricke
inherently contained EPA/EPA, PC-DHA/DHA, and PC-EPA/DHA.
With regard to suitability for human consumption, Itano and WHO
Bulletin recognize krill as valuable for human consumption and thus provide
a reason to modify the extracts disclosed in Fricke for human consumption.
In that regard, Bergelson teaches removal of chloroform/methanol solvents
from lipids by rotary evaporation. Ex. 1017, 1011.
Patent Owner contends that the combination of Fricke, Bergelson,
Yasawa, Itano, and the WHO Bulletin fail to suggest a krill extract that is
suitable for human consumption. Resp I, 4246. Patent Owner contends
that Fricke and Bergelson disclose krill extracts obtained with toxic solvents,
chloroform and methanol, and that such techniques are intended to produce
an extract only for laboratory analysis, not human consumption. Id. at
3842. Patent Owner further contends that Bergelson’s extraction process
uses benzene, an additional toxic substance. Id. at 43 (citing Ex. 1017, 23).
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Patent Owner contends that the toxicity of the Folch method solvents
where known as: 1) Beaudoin teaches that the Folch method “is not
commercially feasible because of the toxicity of the solvents” (id., citing Ex.
1002, 5; Ex. 2059 ¶ 83); 2) Maruyama teaches that use of chloroform is
unacceptable because it “entails the fear that harmful substances might
remain, no matter how the [extracts] are refined and fractionated, making it
difficult to use this in food products” (id. at 44, citing Ex. 1004, 2; Ex. 2059
¶ 83); and 3) Fujita teaches that extracts intended for use in human food
products should be obtained with non-toxic organic solvents (id. at 44, citing
Ex. 1005, 14; Ex. 2059 ¶ 83).
We are not persuaded that the evidence relied on by Patent Owner
supports a finding that the use of methanol and chloroform renders the
extracts of Fricke unsuitable for human consumption in the amounts that
remain after removal efforts. Rather, the evidence relied on by Patent
Owner suggests that these solvents, in the amounts that remain after removal
efforts, are undesirable, because of toxicity in larger amounts, and therefore
commercially infeasible. See, e.g., Ex. 1004, 2 (“The method using
chloroform ethanol . . . entails the fear that harmful substances might
remain, no matter how the [extracts] are refined and fractionated, making it
difficult to use this in food products, which is a problem”). Specifically, as
noted by Petitioner, FDA guidelines contemplate ingestion of chloroform or
methanol. Reply 13 (citing Ex. 1095, 6). Moreover, as further noted by
Petitioner, an ordinary artisan would have known that such solvents could
have been removed by evaporation. Id. (citing Ex. 2059 ¶ 89; Ex. 1097,
304:6–22).
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In view of the above, we conclude that Petitioner has demonstrated by
a preponderance of the evidence that claims 1, 19, 20, 21, 24, 42, 43, and 44
would have been obvious over the combination of Fricke, Bergelson,
Yasawa, Itano, and the WHO Bulletin.
b. Claims 2, 3, 25, and 26
As discussed above, we interpret claims 2 and 25 to recite a total
phospholipid concentration in the range of 36% to 44% w/w, and interpret
claims 3 and 26 to recite a total phospholipid concentration in the range of
36% to 54% w/w.
Petitioner contends that Fricke discloses krill extracts containing
39.6% to 42.5% phospholipids, which falls within the range recited in claims
2, 3, 25, and 26. Pet. I, 40 (citing Ex. 1006, 822 (Table 1)).
Patent Owner contends that the data in Table 1 of Fricke is expressed
in weight percentage of total lipids, not as a weight percentage of the
components of the extract as a whole, and, as such, Fricke Table 1 does not
disclose the recited weight percent of the phospholipid component. Resp. I,
4750 (citing Ex. 2037, 178:1818, 187:49, 188:519; Ex. 2059 ¶¶ 110,
112115). Patent Owner further contends that an analogous extraction
method, referred to as the Bligh & Dyer method, produces total lipid content
of concentrations as low as 92.3 and 90% of the total weight of the extract,
thus the data presented in Fricke Table 1 would not have informed a person
of ordinary skill in the art as to the total phospholipid concentrations as a
weight percent of the extract as a whole. Id. at 49, Ex. 2059, Jaczynski Decl.
¶ 112; Ex. 2020
Petitioner contends that the Folch extraction method used by Fricke
would produce an extract containing only lipids. Reply, 14 (citing Ex. 1078,
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502 (“One washing was sufficient for removing all the non-lipide
contaminants from the crude extract.”)). Petitioner further contends that the
Bligh & Dyer extraction method is not the equivalent of the Folch extraction
method and has been found to be less efficient than Folch. Id. (citing Ex.
1105); see also, Ex. 1105, 1286 (“[F]or samples containing >2% lipid (n =
34), the Bligh and Dyer estimates of lipid content were significantly lower
than those of Folch (P < 0.0001).”).
Petitioner further contends that, even assuming Patent Owner is
correct in their contention that that there are about 8–10% non-lipid
materials in the Fricke extracts, both extracts in Fricke’s Table 1 would still
fall within the claimed ranges. Specifically, Petitioner contends that “[e]ven
assuming only 90% are lipids, the phospholipid concentrations would be
41.13% and 39.6% for the 1977 and 1981 samples, respectively.” Reply, 14
n. 4 (citing Ex. 1006 at Table 1).
In view of the arguments and evidence summarized above, we find
that the data summarized in Fricke’s Table 1 would have represented at least
90% of the components of the disclosed extracts. As such, the data shows
that the Fricke extracts contained the claimed amounts of total
phospholipids. Accordingly, we conclude that Petitioner has demonstrated
by a preponderance of the evidence that claims 2, 3, 25, and 26 would have
been obvious over the combination of Fricke, Bergelson, Yasawa, Itano, and
the WHO Bulletin.
c. Claims 4 and 27
Dependent claims 4 and 27 require the claimed extract or solution to
have an additional lipid, such as a free fatty acid.
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In its Response, Patent Owner does not specifically address the merits
of Petitioner’s proposed ground with regard to claims 4 and 27.
As Petitioner notes, Fricke discloses krill extracts containing from
8.5% to 16.1% free fatty acids. Pet. I, 42, 57; Ex. 1006, 822 (Table 1).
Accordingly, we conclude that Petitioner has demonstrated that claims 4 and
27 are unpatentable as obvious over the combination of Fricke, Bergelson,
Yasawa, Itano, and the WHO Bulletin.
a. Claims 5 and 28
Dependent claims 5 and 28 require a concentration of free fatty acids
of about 5% w/w of the lipids in the recited krill extract.
Petitioner contends that Fricke discloses krill extracts containing from
8.5% to 16.1% free fatty acids, which is encompassed by about 5%, as
defined in the ’351 patent. Pet. I, 42 (citing Ex. 1006, 822 (Table 1)).
As noted above, we interpret “about 5%” as used in claims 5 and 28 to
indicate a range of 2.57.5% w/w. Thus, we find the Fricke extracts having
free fatty acids concentrations of 8.5% to 16.1% to be outside of the claimed
range.
Accordingly, we conclude that Petitioner has failed to establish that
claims 5 and 28 are unpatentable as obvious over the combination of Fricke,
Bergelson, Yasawa, Itano, and the WHO Bulletin.
b. Claims 6, 9, 29, and 32
Dependent claims 6 and 29 require the claimed extract or solution to
comprise polyunsaturated fatty acids (PUFAs) at a concentration of at least
15% w/w. Dependent claims 9 and 32 require the PUFAs to be omega-3
fatty acids.
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Petitioner contends that Fricke discloses krill extracts containing
21.42% omega-3 fatty acids. Pet I, 43 (citing Ex. 1006, 823 (sum of n-3s in
Table 2)).
In its Response, Patent Owner does not address specifically the merits
of Petitioner’s proposed ground with regard to claims 6 and 29.
With regard to claim 9 and 32, Patent Owner contends that Fricke
Table 2 shows particular fatty acids as a percentage of the weight of total
fatty acids, not as a percentage of the weight of the total lipids of the extract.
Resp. I, 5051 (citing Ex. 2037, 196:815; Ex. 2059 ¶ 117).
Petitioner contends that, even assuming Table 2 of Fricke shows fatty
acids as a weight percentage of total fatty acids, not as weight percentage of
total lipids in the extract, Fricke still discloses extracts containing at least
15% omega-3 fatty acids, which can be derived from calculations using the
data presented in Fricke Tables 1 and 2. Reply 1415 (citing Ex. 2037,
196:16–198:14, 267:22–269:21). However, the record does not show that
these calculations were completed, and Petitioner does not direct us to
sufficient evidence establishing that the Fricke extracts contained the recited
amounts of omega-3 fatty acids. Accordingly, we find that Petitioner has
failed to adequately explain how it can be determined that the Fricke extracts
contained at least 15% w/w omega-3 fatty acids.
In view of the above, we conclude that Petitioner has demonstrated
that claims 6 and 29 are unpatentable as obvious over the combination of
Fricke, Bergelson, Yasawa, Itano, and the WHO Bulletin. We conclude that
Petitioner has failed to show that claims 9 and 32 are unpatentable as
obvious over the combination of Fricke, Bergelson, Yasawa, Itano, and the
WHO Bulletin
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c. Claims 12, 13, 35, and 36
Dependent claims 12 and 35 require the claimed extract or solution to
have a metal. Dependent claims 13 and 36 require the metal to be zinc,
selenium, or a mixture thereof.
Petitioner contends that krill extracts disclosed in the prior art
inherently would contain zinc (“Zn”) and selenium (“Se”). Pet. I, 58 (citing
Ex. 1018, 551). This conclusion is supported by the declaration of Dr. Lee,
which presents evidence that zinc and selenium may be extracted
successfully from E. superba. Ex. 1045, Exhibit A (Samples “S9,” “S10,”
“S18,” “S19,” “S20,” and corresponding samples prepared by Dr. Budge
(Ex. 1041)).
Patent Owner contends that the WHO Bulletin discloses that krill
meat is known to contain Zn and Se, but does not suggest that a krill extract
would contain Zn and/or Se. Resp. I, 5253. Patent Owner further contends
that “[e]ven if the Board agreed that Petitioner’s recreation testing data show
that Zn and Se are inherently present in krill extracts, this does not prove
obviousness unless one of ordinary skill would have recognized it at the time
of the patented inventions. Id. (citing In re Rijckaert, 9 F.3d 1531 (Fed. Cir.
1993); M.P.E.P. § 2141.02).
We are not persuaded. The preponderance of evidence shows that
zinc and selenium are present inherently in krill (Ex. 1018, 551) and in krill
extracts (Ex. 1045, Exhibit A). The identification of an inherent property
does not render a product nonobvious. PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (stating that, in an obviousness
context, inherency is present “when the limitation at issue is the “natural
result” of the combination of prior art elements”); see also In re Kao, 639
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F.3d 1057, 1070 (Fed. Cir. 2011) (“[The prior art’s] express teachings render
the claimed . . . formulation obvious, and the claimed [blood concentration]
adds nothing of patentable consequence.”).
In view of the above, we conclude that Petitioner has demonstrated by
a preponderance of the evidence that claims 12, 13, 35 and 36 would have
been obvious over the combination of Fricke, Bergelson, Yasawa, Itano, and
the WHO Bulletin.
d. Claims 22, 23, 45, and 46
Dependent claims 22, 23, 45, and 46 require the claimed extract or
solution to have an antioxidant such as astaxanthin.
Petitioner points us to where Fricke discloses krill extracts containing
carotenoids, which are antioxidants. Pet. I, 43 (citing Ex. 1006, 821 (Table
1, note b)).
In its Response, Patent Owner does not specifically address the merits
of Petitioner’s proposed ground with regard to claims 22, 23, 45, and 46.
In view of the above, we conclude that Petitioner has demonstrated by
a preponderance of the evidence that claims 22, 23, 45, and 46 would have
been obvious over the combination of Fricke, Bergelson, Yasawa, Itano, and
the WHO Bulletin.
3. Conclusion
In view of the above, we conclude that Petitioner has established by a
preponderance of the evidence that claims 1, 4, 6, 9, 12, 13, 1924, 27, 29,
32, 35, 36, and 4246 of the ’351 patent are unpatentable as anticipated by
Beaudoin.
We conclude that Petitioner has established by a preponderance of the
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evidence that claims 14, 6, 12, 13, 1927, 29, 35, 36, and 4246 are
unpatentable as obvious over the combination of Fricke, Bergelson, Yasawa,
Itano, and the WHO Bulletin.
We conclude that Petitioner has failed to establish by a preponderance
of the evidence that claims 2, 3, 5, 25, 26, and 28 of the ’351 patent are
unpatentable as anticipated by Beaudoin.
We conclude that Petitioner has failed to establish by a preponderance
of the evidence that claims 5, 9, 28, and 32 are unpatentable as obvious over
the combination of Fricke, Bergelson, Yasawa, Itano, and the WHO
Bulletin.
III. PATENT OWNER’S MOTION TO SEAL
Patent Owner filed a Motion to Seal certain information contained in
Ex. 2059, which Petitioner Aker has designated as confidential. Paper 67.
The portions of Ex. 2059 that Patent Owner seeks to file under seal appear,
on their face, to contain confidential research, development, or commercial
information. Accordingly, Patent Owner’s motion is granted.
IV. PATENT OWNER’S MOTION TO EXCLUDE
Patent Owner seeks to exclude Ex. 1107 as irrelevant. Paper 89.
Because we do not rely on Ex. 1107 to reach this Final Decision, we dismiss
Patent Owner’s Motion to Exclude as moot.
V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 14, 6, 9, 12, 13, 1927, 29, 32, 35, 36, and
4246 of the ’351 patent have been shown to be unpatentable;
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FURTHER ORDERED that claims 5 and 28 of the ’351 patent have
not been shown to be unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Seal is
granted;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed as moot; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Amanda Hollis
KIRKLAND & ELLIS
amanda.hollis@kirkland.com

For PATENT OWNER:

J. Dean Farmer
COOLEY LLP
dfarmer@cooley.com