AKER BIOMARINE ANTARCTIC AS

Patent Trials and Appeals Board

Oct 1, 2020

IPR2018-00295 (P.T.A.B. Oct. 1, 2020)

Trials@uspto.gov Paper 48
571-272-7822 Date: October 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

RIMFROST AS,
Petitioner,
v.
AKER BIOMARINE AS,
Patent Owner.

IPR2018-00295
Patent 9,320,765 B2

Before TINA E. HULSE, CHRISTOPHER G. PAULRAJ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request on Rehearing of Final Written Decision
37 C.F.R. § 42.71(d)

IPR2018-00295
Patent 9,320,765 B2
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I. INTRODUCTION
On June 12, 2019, the Board issued a Final Written Decision in this
proceeding, which included a decision on Patent Owner’s Motion to Amend.
Paper 35 (“Decision” or “Final Dec.”). In the Decision, we determined that
claims 1–48 of U.S. Patent No. 9,320,765 B2 (“the ’765 patent”) and
proposed substitute claims 49–56 included with the Motion to Amend
(“proposed substitute claims”) were unpatentable over the prior art of record.
Id. at 69.
On July 12, 2019, Patent Owner, Aker Biomarine Antarctic AS, filed
a timely Request for Rehearing under 37 C.F.R. § 42.71(d). Paper 36 (“Req.
Reh’g”). On August 15, 2019, Petitioner, Rimfrost AS, with our
authorization, filed a Response to the Request for Rehearing. Paper 37
(“Resp. Req. Reh’g”). Patent Owner, with our authorization, filed a Reply
on September 4, 2019. Paper 38 (“Reply Req. Reh’g”).
The asserted grounds for rehearing relate to the Board’s reliance on
the teachings of Randolph1 concerning levels of esterified astaxanthin as a
basis for finding the proposed substitute claims unpatentable.2 Req. Reh’g

1 Randolph et al., US 2005/005728 A1, published March 17, 2005 (Ex. 1011
“Randolph”).
2 While the concluding paragraph of the Motion to Amend portion of our
Decision states that only substitute claim 56 was unpatentable over the
combination of Sampalis, Catchpole Fricke, Randolph, and NKO (Final Dec.
68), we nonetheless relied upon the teachings of Randolph for our
unpatentability analysis for all the proposed substitute claims. As such, the
Decision should have stated that proposed substitute claims 49–52, 55, and
56 are unpatentable over Sampalis, Catchpole Fricke, Randolph, and NKO
and that proposed substitute claims 53 and 54 are unpatentable over
Sampalis, Catchpole Fricke, Bottino, Randolph, and NKO.
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1–2. Patent Owner contends that the Board’s Decision regarding the
proposed substitute claims was in error as the Decision relied on a
combination of references that included Randolph that was allegedly not
advanced by the Petitioner. Req. Reh’g 10–11. Patent Owner also argues
that the Board’s Decision violated the Administrative Procedure Act
(“APA”) in that Patent Owner was not given notice of the combination of
references we applied in our Decision and was not afforded an opportunity
to respond to the alleged new grounds of unpatentability based in that
combination. Req. Reh’g 9.
On November 22, 2019, the Board issued an order authorizing
supplemental briefing. Paper 40 (“Reh’g Order”). Specifically, we explained
that the Board “erred in concluding that proposed [substitute] claims 49–56
are unpatentable over Sampalis, Catchpole, Fricke, and Randolph without
affording Patent Owner the opportunity to fully address Petitioner’s
argument concerning the teachings of Randolph.” Id. at 4. The Rehearing
Order also pointed out that, although the record contained evidence as to
Randolph’s teachings, “Petitioner did not apply Randolph to the proposed
[substitute] claims until it filed its Sur-Reply.” Id. Thus, the Board
determined that it was appropriate to allow further briefing regarding
whether the proposed claims were unpatentable over the combined teachings
of Sampalis, Catchpole, Fricke, and Randolph. Id. at 5.
Pursuant to that Order, Patent Owner filed an authorized
Supplemental Brief on December 3, 2019 (Paper 42 (“Supp. Br.”)),
Petitioner filed an authorized Response on December 17, 2019 (Paper 43
(“Supp. Resp.”)), and Patent Owner filed an authorized Reply on December
20, 2019 (Paper 44 (“Supp. Reply”)).
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On July 6, 2020, the Precedential Opinion Panel (“POP”) issued its
decision in Hunting Titan, Inc. v. Dynaenergetics Europe GmbH, IPR2018-
00600, Paper 67 (PTAB July 6, 2020) (precedential) (“Hunting Titan”),
which relates to motions to amend and the Board’s authority to consider
issues of unpatentability not raised by a petitioner. The POP held that the
Board may consider such issues, but only in certain rare circumstances. Id. at
4. In an email sent July 16, 2020, the Board requested briefing from the
parties addressing what impact, if any, Hunting Titan has on the present
proceeding. Ex. 3001. On July 24, 2020, Petitioner filed a Supplemental
Brief Addressing Potential Impact of Hunting Titan. Paper 45 (“Pet. HT
Br.”). Patent Owner filed its Supplemental Response Brief Addressing the
Impact of Hunting Titan on August 3, 2020. Paper 46 (“PO HT Br.”).
II. LEGAL STANDARD
A request for rehearing “must specifically identify all matters the
party believes the Board misapprehended or overlooked, and the place where
each matter was previously addressed in a motion, an opposition, or a reply.”
37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
on a request for rehearing lies with the party challenging the decision. Id.
III. ANALYSIS
A. The Board Properly Considered a Ground of Unpatentability Including
Randolph
As part of our analysis of whether to grant Patent Owner’s Request for
Rehearing and grant its Motion to Amend, we need to consider the issue of
whether the Board properly found the proposed substitute claims
unpatentable over a combination of references that includes Randolph.
Patent Owner contends that we should not have concluded that the proposed
claims were unpatentable as the combination including Randolph was not
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properly before the Board and should not have been considered. Req. Reh’g
2–3. Petitioner disagrees. Resp. Req. Reh’g 6–7.
Two recent decisions, one by our reviewing court, Nike, Inc. v. Adidas
AG, 955 F.3d 45 (Fed. Cir. 2020), and the other by the POP, Hunting Titan,
guide our analysis. Nike addresses whether the Board has the authority to
consider a new ground of unpatentability in connection with a motion to
amend. Nike, 955 F.3d at 51–52. Hunting Titan addresses whether, and
under what circumstances, the Board should exercise any such authority.
Hunting Titan at 5.
In Nike, the Board denied patent owner Nike’s motion to amend,
finding the proposed claims unpatentable as obvious. Nike, 955 F.3d at 49.
The Board based its decision on the entirety of the record including a
reference that, while part of the record, was not relied upon by petitioner
Adidas to challenge the proposed claims. See id at 48–49 (noting Adidas
relied on Nishida, Schuessler I and Schuessler II, and the Board added
Spencer to its analysis). Nike argued that the Board violated the APA by
failing to give notice that it would rely on Spencer to support its obviousness
conclusion for the substitute claim. Id. at 51. The Federal Circuit agreed. Id.
The Federal Circuit began its analysis by holding “that the Board may
sua sponte identify a patentability issue for a proposed substitute claim
based on the prior art of record.”3 Id. The court distinguished the earlier
holdings in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed.
Cir. 2016) and In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373
(Fed. Cir. 2016) where the Board was limited to addressing the issues raised

3 The court did not address the issue of whether the Board was permitted to
look outside the record to determine the patentability of proposed substitute
claims. Id. at 51 n.1.
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in the petition against already issued claims, noting that those cases did not
involve the motions to amend. Id. The court continued:
It makes little sense to limit the Board, in its role within
the agency responsible for issuing patents, to the petitioner’s
arguments in this context. Rather, based on consideration of the
entire record, the Board must determine whether the patent
owner’s newly-presented, narrower claims are “supported by
the patent’s written description” and “unpatentable in the face
of the prior art cited in the IPR.”
Id. at 51–52 (quoting Aqua Prods., Inc., v. Matal, 872 F.3d 1290, 1314 (Fed.
Cir. 2017) (citing 35 U.S.C. § 316(d)(3))). Thus, under Nike, the Board has
the authority to consider a new ground of unpatentability when it considers
the substitute claims proposed in a motion to amend.
We next turn to the guidance the POP provided in Hunting Titan.
First, the POP held that “the Board may, in certain rare circumstances,
raise a ground of unpatentability that a petitioner did not advance, or
insufficiently developed, against substitute claims proposed in a motion to
amend.” Id. at 4. The rare circumstances exemplified in the decision include
cases where the petitioner has ceased to participate in the proceeding; where
the petitioner has not opposed the motion to amend; or “where certain
evidence of unpatentability has not been raised by the petitioner, but is
readily identifiable and persuasive such that the Board should take it up in
the interest of supporting the integrity of the patent system, notwithstanding
the adversarial nature of the proceedings.” Id. at 12–13.
The POP also held that where the Board intends to raise a new ground
of unpatentability in connection with a motion to amend, the patent owner
must be given notice and an opportunity to address the proposed new
grounds. Id. 15.
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Because the Hunting Titan POP decision issued after Patent Owner
filed its Request for Rehearing in this case, we requested further briefing
from the parties to address the potential impact of its holdings on the present
proceeding.
In its Supplemental Briefing, Petitioner contends that the facts of the
present case are distinguishable from those in Hunting Titan and that the
POP decision supports its position that Patent Owner’s Request for
Rehearing should be denied. Pet. HT Br. 1. Petitioner contends that, unlike
in Hunting Titan, the issue of whether the proposed substitute claims are
obvious over Sampalis, Catchpole, Fricke, and Randolph was raised and
sufficiently developed during the proceeding. Id. at 2–4. Petitioner also
contends that Patent Owner was given notice of the potential new ground
and was allowed an opportunity to respond through the supplemental
briefing authorized by the Board. Id. at 3–4. Petitioner contends that even if
the issue of unpatentability based on the four references was not sufficiently
developed, the evidence of unpatentability was readily identifiable and
persuasive such that “the Board should take it up in the interest of supporting
the integrity of the patent system.” Id. at 4 (quoting Hunting Titan, Paper 67
at 13).
Patent Owner contends that Hunting Titan is dispositive with regard to
its Motion to Amend and its Request for Rehearing and that the request and
the Motion to Amend should both be granted. PO HT Br. 1. Patent Owner
contends that Petitioner did not adequately develop the ground relied upon
by the Board. Id. at 1–3. Patent Owner also argues the circumstances of the
present case do not compel the Board to advance a new ground of
unpatentability that Petitioner did not advance or sufficiently develop. Id. at
3–5.
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We have considered the arguments advanced by the parties and
determine that we appropriately considered Randolph’s teachings in
assessing the patentability of the proposed claims insofar as Petitioner raised
Randolph as prior art against the proposed substitute claims in opposing
Patent Owner’s Motion to Amend. As such, we are not persuaded that our
consideration of Randolph constituted a new ground of unpatentability.
Thus, Hunting Titan is distinguishable and does not compel us to grant
Patent Owner’s Motion to Amend.
Patent Owner contends that the Board should not have raised a new
ground in this case because Petitioner “vigorously prosecuted its case” and
elected not to pursue an argument based on Randolph. PO HT Br. 4. We do
not find this argument persuasive as it is inconsistent with the record. As we
explain below, Petitioner raised the issue of the teachings of Randolph in its
briefing and during arguments before the Board. This is not a case where
Petitioner failed to sufficiently advance an unpatentability ground that
includes Randolph.In the present proceeding, Petitioner in its Petition
challenged some of the original claims based on the combination of
Sampalis, Catchpole, Fricke, Breivik, and Randolph. Pet. 7. With respect to
the proposed substitute claims, Patent Owner first raised the teachings of
Randolph preemptively in its Motion to Amend when it argued that
Randolph taught away from the recited astaxanthin concentration because
“[t]he lowest amount of astaxanthin ingredient disclosed in Randolph is 1%,
which is equivalent to 10,000 mg/kg” and “[t]his is over 13 times greater
than the highest amount of astaxanthin esters recited in proposed substitute
claim 49.” Paper 16 (“MTA”), 18–19. Petitioner responded to Patent
Owner’s teaching away argument by pointing out that Randolph taught that
the compositions could contain “any amount of an astaxanthin ingredient.”
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Paper 20 (“MTA Opp.”), 15–16 (quoting Ex. 1011 ¶¶ 7, 44). Petitioner
supported this argument with the declaration of Dr. Tallon in which Dr.
Tallon testified that Randolph discloses a krill oil composition having 158
mg/kg astaxanthin ester. Id. (citing Ex. 1086 ¶¶ 197–202). Patent Owner
cross-examined Dr. Tallon regarding this teaching in Randolph. Ex. 2020,
155–157. In its Sur-Reply to the Motion to Amend, Petitioner specifically
cited to this cross-examination testimony when Petitioner argued that
Randolph taught a composition having an astaxanthin level falling with the
scope of the proposed substitute claims. Paper 30, 10 (“MTA Sur-Reply”).
In addition to discussing Randolph in its briefing and through its
expert, Petitioner also made specific reference to the teachings of Randolph
in the demonstratives used at trial and the Board asked specific questions
about the teachings of Randolph and Dr. Tallon’s Testimony. Paper 34, 17–
18 (“Tr.”).
Patent Owner contends that the ground of unpatentability that includes
Randolph was not sufficiently developed by Petitioner. PO HT Br. 2–3.
Specifically, Patent Owner contends that Petitioner did not adequately
address the issue of motivation to combine Randolph with the remaining
references nor did it address whether there was a reasonable expectation of
success. Id.
Based on the foregoing we find that, unlike the situation in Hunting
Titan, Petitioner in the present case adequately developed the issue of
whether the proposed substitute claims are unpatentable over a combination
of references that includes Randolph. With respect to the specific
unpatentability arguments set forth by Petitioner in its Opposition to the
Motion to Amend, we recognize that Petitioner only relied upon Randolph in
combination with other references to argue for the unpatentability of
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proposed substitute claim 56. MTA Opp. 24–25. However, Petitioner’s
arguments concerning Randolph were in response to Patent Owner’s
contention that Randolph taught away from the range of astaxanthin ester
(100 mg/kg to 700 mg/kg) recited in all the substitute clams. See MTA, 18–
19 (“Thus, Patent Owner contends that Randolph’s disclosure of at least
10,000 mg/kg of an astaxanthin ingredient teaches away from krill oil
compositions that include the 100 mg/kg to 700 mg/kg astaxanthin esters
recited in proposed substitute claim 49.”). Patent Owner was made aware of
Petitioner’s contentions though the briefing submitted by Petitioner and
through the declaration of Dr. Tallon. Furthermore, as discussed more fully
below, the MTA briefing and supporting declaration submitted by Petitioner
adequately discussed the motivation to combine the references and the
reasonable expectation of success. See, e.g., MTA Opp. 24–25; Ex. 1086 ¶¶
15, 50, 64, 221–223.
Moreover, even if we agreed with Patent Owner that Petitioner did not
adequately develop its arguments with respect to Randolph, we would
otherwise conclude that we properly considered Randolph in assessing the
patentability for all the proposed substitute claims in light of the record in
this proceeding and following the guidance in Hunting Titan. The POP held
that the Board may raise a new ground of unpatentability where the evidence
of unpatentability “is readily identifiable and persuasive such that the Board
should take it up in the interest of supporting the integrity of the patent
system, notwithstanding the adversarial nature of the proceedings.” Hunting
Titan, Paper 67 at 12–13. In the present case, the combination of Randolph
with the remaining references is readily identifiable because it was: (1) first
raised by Petitioner in response to Patent Owner’s argument that Randolph
taught away from the recited levels of astaxanthin ester; (2) specifically
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asserted by Petitioner against proposed substitute claim 56; (3) discussed by
Dr. Tallon in his Declaration in support of Petitioner’s Opposition to the
Motion to Amend, (4) the subject of cross-examination testimony of Dr.
Tallon, (5) discussed by Petitioner in its Sur-Reply to the Motion to Amend,
and (6) raised by the panel and discussed with the parties during the oral
hearing. Ex. 1086 ¶¶ 197–202; Ex. 2020, 155–157; MTA Sur-Reply 10; Tr.
17–18. The evidence is persuasive in that Randolph teaches the very element
that Patent Owner argued was lacking from the prior art and contradicts
Patent Owner’s argument that Randolph teaches away from the claimed
range of astaxanthin ester. See MTA 18.
Based on the foregoing we conclude that we properly considered
Randolph in determining the patentability of the proposed substitute claims.
B. Supplemental Briefing Cured Any Potential Violation of the APA
Patent Owner contends that it had no proper opportunity to respond to
the grounds including Randolph, which violates the APA and is contrary to
Federal Circuit precedent. Req. Reh’g, 9–11 (citing SAS Institute, 825 F.3d
at 1351 and In re Magnum Oil Tools, 829 F.3d at 1378).
Petitioner responds that the references and arguments relied upon by
the Board were part of the record and the Board properly considered the
entirety of the record. Resp. Req. Reh’g 6–7. Petitioner contends that no
APA violation occurred as Patent Owner was on notice of Petitioner’s
reliance on Randolph’s teaching with regard to astaxanthin levels because
Petitioner presented it in response to Patent Owner’s arguments “regarding
Randolph’s teachings and the patentability of the substitute claims.” Id. at 8–
9.
In its supplemental brief addressing the combination of Sampalis,
Catchpole, Fricke, and Randolph, Patent Owner maintained its position that
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the Board should limit its analysis to the grounds actually raised by
Petitioner in the Opposition challenging the proposed substitute claims.
Supp. Br. 1. Patent Owner asserts that it “has been prejudiced by not being
able to, among other things, submit expert testimony on the combination of
the astaxanthin content of Randolph with the other references.” Id.
As explained above, we have considered the parties’ arguments and
are not persuaded that our reliance on the teachings of Randolph concerning
levels of esterified astaxanthin in our Final Written Decision was improper
or erroneous. Moreover, any alleged prejudice to Patent Owner was
mitigated by our authorization of supplemental briefing in this proceeding to
allow the parties to address the merits of our reliance on Randolph’s
teachings. Paper 40.
The Federal Circuit’s decision in Nike, discussed above is on point.
There, the court addressed Nike’s argument regarding a violation of the
APA and held
Although the Board was permitted to raise a patentability
theory based on Spencer, the notice provisions of the APA and
our case law require that the Board provide notice of its intent
to rely on Spencer and an opportunity for the parties to respond
before issuing a final decision relying on Spencer.

Id. at 52.
The court went on to give two examples as to how the notice
requirements of the APA could be met when the Board intends to rely on
prior art not addressed by the parties:
For example, prior to issuing its decision on remand, the Board
in this case could have informed the parties that it intended to
rely on Spencer for disclosing the disputed limitation of
substitute claim 49, and requested supplemental briefing from
the parties regarding its proposed ground for unpatentability.
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Alternatively, had the Board held an oral hearing on remand, it
could have requested that the parties be prepared to discuss
Spencer in connection with substitute claim 49 at the hearing.
Either of these actions would satisfy the APA’s notice
requirements, but neither occurred in this case.

Id. at 54. This approach is also consistent with the POP’s holding in Hunting
Titan. In Hunting Titan, the POP held that where a new ground of
unpatentability is raised, a patent owner needs notice of the new ground and
an opportunity to address the new ground. Id. at 15. Although we determine
that the Board did not raise a new ground of unpatentability for the reasons
set forth above, even if our analysis could arguably be considered a new
ground, we provided Patent Owner with the requisite notice and an
opportunity to respond.
As discussed above, in response to Patent Owner’s request, we
authorized supplemental briefing by the parties to specifically address the
teachings of Randolph that Petitioner raised in its Sur-Reply and that we
relied upon in finding the proposed claims unpatentable. Reh’g Order. The
parties have now briefed the issues regarding the teachings of Randolph and
the propriety of the combination of references on which we relied.
We find unpersuasive Patent Owner’s contention that the additional
briefing we authorized could not remedy any potential APA violation
because it did not have an opportunity to submit further expert testimony.
Following the guidance set forth in both Nike and Hunting Titan, the Board
authorized additional briefing regarding combining Randolph with the other
references. Both the Federal Circuit’s decision in Nike and POP’s decision in
Hunting Titan teach that supplemental briefing is a way for the Board to
satisfy the requirement for notice and an opportunity to respond. Nike, 955
F.3d at 54; Hunting Titan, Paper 67 at 15. But we find nothing in either
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decision to suggest that parties must be provided with an opportunity to
submit further expert testimony as part of such supplemental briefing in
order to satisfy the APA requirements.
Based on the foregoing, we determine that it was proper to find the
proposed claims unpatentable based on our consideration of the entire
record. Moreover, we determine that allowing the parties to further brief our
reliance on Randolph’s teachings remedied any potential APA violation.
C. Unpatentability of the Proposed Claims
In the Final Written Decision issued in this case, the Board
determined that proposed claims 49 to 56 were unpatentable over the
teachings of Catchpole, Fricke, and Randolph. Final Dec. 68; see also Reh’g
Order 4 (clarifying that the Board found proposed substitute claims 49–56
unpatentable over Sampalis, Catchpole, Fricke, and Randolph). The Board
found, in part, that Randolph taught preparing a product having from 100 to
700 mg/kg astaxanthin ester. Final Dec. 67–68.
Patent Owner contends that the Board erred in finding the proposed
claims unpatentable. Supp. Br. 1. Specifically, Patent Owner contends that
the combination of Catchpole, Fricke, and Randolph does not teach the
limitation calling for 100 to 700 mg/kg astaxanthin esters. Id. Patent Owner
also contends that Petitioner failed to show that one skilled in the art would
have been motivated to prepare a krill oil product with an astaxanthin level
of from 100 to 700 mg/kg. Id. We consider each of these arguments in turn.
1. The Teachings of Randolph
As noted in our Decision, Randolph discloses compositions for
modulating cytokines to regulate an inflammatory or immunomodulatory
response including, inter alia, rosehips and krill oil. Ex. 1011 ¶ 8. With
regard to rosehips, Randolph discloses that the composition may include one
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or more rosehip ingredients, such as “dried rosehips, rosehip oil, and rosehip
extracts.” Id. ¶ 24.
Concerning krill oil, Randolph discloses that
[a] composition of the invention can include krill oil. Krill oil
can be obtained from any member of the E. family, for example
E. superba. Conventional oil producing techniques can be used
to obtain the krill oil. In addition, krill oil can be obtained
commercially from Neptune Technologies and Bioresources of
Quebec, Canada.

Id. ¶ 39. Randolph further explains that “[a] composition can contain any
amount of krill oil,” but will typically contain “between about 300 mg and
about 3000 mg of a krill oil ingredient.” Id. ¶ 40.
Randolph teaches:
A composition can contain any amount of an astaxanthin
ingredient. For example, at least about 1 percent (e.g., at least
about 2, 3, 4, 5, 10, 15, 20, 25, 30, 35, 40, 50, 60, 70, 80, or 90
percent) of a dietary supplement can be astaxanthin. Typically,
a composition contains between about 0.5 mg and about 50 mg
of an astaxanthin ingredient.

Id. ¶ 44.
Patent Owner contends we erred in our Decision, as Randolph does
not teach the limitation calling for an amount of astaxanthin ester ranging
from 100 to 700 mg/kg. Supp. Br. 2–6.
Patent Owner contends that one skilled in the art would have read
Randolph as teaching the preparation of krill oil compositions having
significantly higher amounts of astaxanthin ester. Supp. Br. 2–3. Patent
Owner points to the teaching in Randolph that the krill oil that can be NKO
krill oil or krill oil that has been conventionally produced. Supp. Br. 2;
Ex. 1011 ¶ 39. Patent Owner contends that the evidence of record shows that
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NKO krill oil has an astaxanthin content of 1500 mg/kg and that Randolph
does not contain any teachings as to what the astaxanthin content would be
for a krill oil composition produced by a conventional technique. Supp. Br.
2–3. Patent Owner contends that Randolph’s teaching that the disclosed
composition can have “any amount of astaxanthin” refers to the general
compositions disclosed in Randolph and not to the krill oil used in the
compositions. Supp. Br. 3.
These arguments do not persuade us that we erred in finding the
proposed claims unpatentable. As Petitioner argues, Randolph teaches that
the disclosed compositions may comprised of any amount of krill oil and
any amount of astaxanthin. MTA Opp., 16; Ex. 1011 ¶¶ 40, 44. Although
Randolph teaches that the krill oil can be obtained commercially, that
reference does not limit the krill oil to a commercial product. Moreover,
although some commercial products contain higher amounts of astaxanthin
ester, it was also known, as the present Specification teaches, that certain
commercial products at the time had astaxanthin ester levels that fell within
the recited range. See Ex. 1001, col. 27, ll. 38–50 (Table 16) (NKO
commercial product had an astaxanthin level of 472 mg/kg).
We are also persuaded by the testimony of Dr. Tallon, previously
made of record with Petitioner’s Opposition, that Randolph teaches a range
of astaxanthin levels that would yield an astaxanthin ester level within the
range recited in the claims. In particular, Dr. Tallon attests that Randolph
teaches that the amount of krill oil in the supplement can range from 300 mg
to 3000 mg and that the astaxanthin level can range from 0.5 mg to 50 mg.
Ex. 1011 ¶¶ 40, 44. Using the values reported in Randolph, Dr. Tallon
calculated that the amount of astaxanthin ester present in a supplement
containing 3000 mg krill oil and 0.5 mg astaxanthin would yield a
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supplement containing about 167 mg/kg of astaxanthin ester. Ex. 1086 ¶¶
199–202.
Patent Owner contends that Dr. Tallon’s calculations of astaxanthin
levels in Randolph are based on hindsight in that Dr. Tallon improperly
reads Randolph as referring to krill oil compositions when Randolph
actually refers to the combined product. Supp. Br. 4. Patent Owner also
contends that Dr. Tallon improperly used values at the extreme ends of the
ranges for krill oil and astaxanthin to support his conclusion that the ranges
of astaxanthin esters would range as low as 158 mg/kg. Id. at 5. Patent
Owner contends that the calculations in Dr. Tallon’s report actually result in
an astaxanthin level that is an order of magnitude higher than 158 mg/kg. Id.
at 6.
Again, we are not persuaded by Patent Owner’s arguments. While we
agree with Patent Owner that Randolph teaches a combined product,
Randolph also teaches that the combined product can comprise at least about
90 percent krill oil resulting in a product that is almost completely
comprised of krill oil. Ex. 1011 ¶ 40. We thus find Dr. Tallon’s assumption
that the krill oil was the source of the astaxanthin to be reasonable and
supported.
We are not persuaded by Patent Owner’s arguments regarding
Dr. Tallon’s use of the endpoints of the ranges taught by Randolph.
Randolph clearly teaches that the disclosed composition can contain as little
as 0.5 mg of astaxanthin and as much as 3000 mg of krill oil creating a
logical lower endpoint for a range of combinations taught by Randolph.
Ex. 1011 ¶¶ 40, 44. We are not persuaded by Patent Owner’s contentions
that the use of the two endpoints by Dr. Tallon was improper.
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Finally, with respect to Dr. Tallon’s calculations, Dr. Tallon clarified
during his cross-examination that the calculations reported in his declaration
contained a typographical error, and then explained how he reached his
conclusion that Randolph teaches an astaxanthin level within the range
recited in the claims. Ex. 2020, 154–155.
Based on the foregoing, we did not err in finding that Randolph
teaches a krill oil composition containing astaxanthin ester in an amount of
from 100 to 700 mg/kg of said krill oil.
2. Motivation to Combine
Patent Owner also contends that we erred in finding the substitute
claims unpatentable as Petitioner had not established a motivation to
combine the references. Supp. Br. 6. To the contrary, Patent Owner argues
that, in fact, one skilled in the art would have been led away from a krill oil
composition comprising from 100 to 700 mg/kg astaxanthin esters. Id. at 7.
Patent Owner contends that Randolph teaches that the supplement can
contain at least one percent astaxanthin and that Patent Owner’s expert Dr.
Heom has calculated that this would be equal to 10,000 mg/kg. Id. at 7–8
(citing Ex. 2013 ¶ 57).
Patent Owner also contends that the teachings of the art as a whole
would have led one skilled in the art to use higher amounts of astaxanthin
ester. Id. at 8–9.
We are not persuaded that our Decision was in error. As Petitioner
points out, Dr. Tallon testified about the motivation to combine the various
references. Supp. Resp. 7–8. Specifically, Dr. Tallon testified that
astaxanthin was a known “potent antioxidant,” and that a person of ordinary
skill in the art would have been motivated to combine krill oil of the cited
references because of the health benefits associated with, inter alia,
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Patent 9,320,765 B2
19
phospholipids and astaxanthin. See, e.g., Ex. 1086 ¶¶ 15, 50, 64, 221–223;
see also MTA Opp. 24–25 (Petitioner’s argument as to motivation to
combine).
With respect to the amount of astaxanthin ester, we are not convinced
that Randolph teaches away from the claimed range. While Randolph does
teach that the amount of astaxanthin may be 1% or greater, in the same
paragraph Randolph states that the amount of astaxanthin is typically from
about 0.5 mg to 50 mg. Ex. 1011 ¶ 44. Thus, while Randolph may teach high
amounts of astaxanthin, it also teaches lower amounts that yield astaxanthin
ester amounts within the range recited in the proposed substitute claims.
Similarly, other teachings in the art do not dissuade one skilled in the
art from using lower amounts of astaxanthin ester. A reference does not
teach away “if it merely expresses a general preference for an alternative
invention but [does] not criticize, discredit or otherwise discourage
investigation into the claimed invention.” Depuy Spine v. Medtronic
Sofmaor, 567 F.3d 1314, 1327 (Fed. Cir. 2009). Patent Owner has not
pointed to nor have we discerned any teaching in the art that would dissuade
one skilled in the art from using a lower amount of astaxanthin ester. As
discussed above, Randolph specifically teaches lower amounts of
astaxanthin, which in turn teaches lower amounts of astaxanthin ester.
Ex. 1011 ¶ 44; Ex. 1086 ¶¶ 199–202.
3. Conclusion as to Patentability of the Proposed Substitute Claims
Based on the foregoing, Patent Owner has not persuaded us that we
erred in our conclusion that the proposed substitute claims would have been
unpatentable. The evidence of record supports our conclusion regarding the
teachings of Randolph with respect to astaxanthin esters and demonstrates
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Patent 9,320,765 B2
20
that one skilled in the art would have been motivated to combine the
teachings of the references.
IV. CONCLUSION
We hereby deny the relief requested in the Request for Rehearing
V. ORDER
Accordingly, it is hereby:
ORDERED that Patent Owner’s Request for Rehearing is denied.

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Patent 9,320,765 B2
21
FOR PETITIONER:
James F. Harrington
Michael I. Chakansky
Ronald J. Baron
John T. Gallagher
HOFFMANN & BARON, LLP
jfhdocket@hbiplaw.com
mchakansky@hbiplaw.com
rbaron@hbiplaw.com
jgallagher@hbiplaw.com
jtgdocket@hbiplaw.com

For PATENT OWNER:
David A. Casimir
J. Mitchell Jones
CASIMIR JONES S.C.
dacasimir@casimirjones.com
jmjones@casimirjones.com

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