Trials@uspto.gov
`571-272-7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Paper 25
`Entered: May 18, 2022
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`RIMFROST AS,
`Petitioner,
`v.
`AKER BIOMARINE ANTARCTIC AS,
`Patent Owner.
`
`
`IPR2020-01534
`Patent 10,010,567 B2
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`JON B. TORNQUIST, Administrative Patent Judges.
`MITCHELL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2020-01534
`Patent 10,010,567 B2
`
`I.
`
`INTRODUCTION
`
`A. Background
`On November 6, 2020, Rimfrost AS (“Petitioner”) filed a Petition
`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–20 of
`U.S. Patent No. 10,010,567 B2 (Ex. 1001, “the ’567 patent”). Aker
`Biomarine Antarctic AS (“Patent Owner”) did not file a Preliminary
`Response to the Petition. On May 20, 2021, we granted institution of an
`inter partes review of claims 1–20 of the ’567 patent on all grounds set forth
`in the Petition. See Paper 6 (“Dec.”) 2, 15.
`Patent Owner filed a Response on August 12, 2021, see Paper 9
`(“Resp.), and Petitioner filed a Reply on November 4, 2021, see Paper 14
`(“Reply”). Patent Owner filed its Sur-Reply on December 16, 2021.
`Paper 17 (“Sur-Reply”). An oral hearing was held on February 17, 2022,
`and a transcript of this hearing was entered into the record. Paper 24
`(“Tr.”).
`This is a Final Written Decision under 35 U.S.C. § 318(a) as to the
`patentability of the challenged claims on which we instituted trial. Based on
`the complete record before us, we determine as set forth below that the
`Petitioner has not shown by a preponderance of the evidence that claims
`1–20 of the ’567 patent are unpatentable.
`
`B. Real Parties in Interest
`Petitioner identifies itself, Olympic Holding AS, Emerald Fisheries
`AS, Rimfrost USA, LLC, Rimfrost New Zealand Limited, and Bioriginal
`Food and Science Corp. as real parties in interest. Pet. 3. Based on various
`ownership interests, and out of “an abundance of caution,” Petitioner also
`
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`IPR2020-01534
`Patent 10,010,567 B2
`identifies Stig Remøy, SRR Invest AS, Rimfrost Holdings AS, and Omega
`Protein Corporation as real parties in interest. Id.
`Patent Owner identifies itself as a real party in interest in this
`proceeding. Paper 4, 1.
`
`C. Related Proceedings
`Petitioner and Patent Owner identify several related matters.
`Specifically, the parties identify Aker Biomarine Antarctic AS v. Olympic
`Holding AS, Case No. 1:16-CV-00035-LPS-CJB (D. Del.), which involved
`U.S. Patent Nos. 9,028,877 B2 (“the ’877 patent”) and 9,078,905 B2 (“the
`’905 patent”). Pet. 3; Paper 4, 1. The parties further identify Investigation
`No. 337-TA-1019 by the United States International Trade Commission,
`which involved the ’877 and ’905 patents, as well as U.S. Patent No.
`9,320,765 (“the ’765 patent”), U.S. Patent No. 9,375,453 (“the ’453 patent”),
`and U.S. Patent No. 9,072,752 (“the ’752 patent”). Pet. 3–4; Paper 4, 1–2.
`The parties also identify the following Board proceedings as related
`matters:
`
` IPR2017-00745 and IPR2017-00747, which requested review
`of the ’905 patent (all challenged claims found unpatentable
`(Ex. 1103), decision affirmed on appeal (Ex. 1154));
`
` IPR2017-00746 and IPR2017-00748, which requested review
`of the ’877 patent (all challenged claims found unpatentable
`(Ex. 1104), decision affirmed on appeal (Ex. 1154));
`
` IPR2018-00295, which requested review of the ’765 patent
`all challenged claims found unpatentable (Ex. 1129));
`
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`IPR2020-01534
`Patent 10,010,567 B2
` PGR2018-00033, which requested review of U.S. Patent No.
`9,644,170 (institution denied because the challenged patent
`was not eligible for post grant review);
` IPR2018-01178 and IPR2018-01179, which requested review
`of the ’453 patent (all challenged claims found unpatentable
`(Exs. 1157, 1158));
` IPR2018-01730, which requested review of the ’752 patent
`(all challenged claims found unpatentable (Ex. 1159)); and
` IPR2020-01532 and IPR2020-01533, which requested review
`of U.S. Patent Nos. 9,644,169 B2 and 9,816,046 B2,
`respectively, and all challenged claims have been found
`unpatentable. See IPR2020-01532, Paper 33, 35 (PTAB April
`6, 2022); IPR2020-01533, Paper 33, 39 (PTAB April 6,
`2022). Patent Owner has sought Director Review in both of
`these cases. See IPR2020-01532, Paper 34; IPR2020-01533,
`Paper 34.
`Pet. 4–7; Paper 4, 2–4.
`
`D. The ’567 Patent (Ex. 1001)
`The ’567 patent discloses extracts from Antarctic krill that include
`bioactive fatty acids. Ex. 1001, 1:24–25. The ’567 patent explains that
`krill oil compositions, including compositions having up to 60% w/w
`phospholipid content and as much as 35% w/w EPA/DHA1 content, were
`known in the art. Id. at 1:59–62. The ’567 patent further explains that
`“[k]rill oil compositions have been described as being effective for
`
`
`1 According to the ’567 patent, “EPA” is 5,8,11,14,17-eicosapentaenoic acid
`and “DHA” is 4,7,10,13,16,19-docosahexanoic acid. Ex. 1001, 9:15–19.
`
`4
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`IPR2020-01534
`Patent 10,010,567 B2
`decreasing cholesterol, inhibiting platelet adhesion, inhibiting artery
`plaque formation, preventing hypertension, controlling arthritis symptoms,
`preventing skin cancer, enhancing transdermal transport, reducing the
`symptoms of premenstrual symptoms or controlling blood glucose levels
`in a patient.” Id. at 1:51–57.
`According to the ’567 patent, frozen krill are typically transported
`from the Southern Ocean to a processing site, but lipases and
`phospholipases within the krill can result in the decomposition of
`glycerides and phospholipids during transport. Id. at 2:8–18, 9:64–10:13.
`To avoid the problem of enzymatic decomposition of krill products, the
`’567 patent describes a method of thermally denaturing the lipases and
`phospholipases in fresh-caught krill prior to storage and processing. Id. at
`9:64–10:13, 10:46–55. The ’567 patent reports that these denaturing steps
`allow for the storage of krill material “for from about 1, 2, 3, 4, 5, 6, 8, 9,
`10, 11, or 12 months to about 24 to 36 months prior to processing.” Id. at
`10:39–45.
`After denaturation, the krill can be subject to extraction processes
`either on board the ship or at a remote location. Id. at 10:39–41. In one
`embodiment, krill oils are extracted from krill meal in two stages. Id. at
`9:57–60. In the first stage, a neutral fraction is extracted using either neat
`supercritical CO2 or such CO2 in combination with 5% ethanol. Id. In the
`second stage, polar lipids (phospholipids) are extracted by adding at least
`20% ethanol to the supercritical CO2 extraction medium. Id. at 9:61–63.
`The ’567 patent reports that “[k]rill oil extracted from denatured
`krill meal by supercritical fluid extraction even 19 months after the
`production of the meal contained virtually no decomposed phospholipids.”
`Id. at 11:3–6. The ’567 patent further reports that the novel krill oil
`
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`IPR2020-01534
`Patent 10,010,567 B2
`compositions of the invention are “characterized by containing high levels
`of astaxanthin, phospholipids, includ[ing] enriched quantities of ether
`phospholipids, and omega-3 fatty acids.” Id. at 9:49–52.
`
`E. Challenged Claims
`Petitioner challenges claims 1 through 20 of the ’567 patent. Of those
`claims, claims 1 and 15 are independent. Both independent claims 1 and 15
`are directed to encapsulated krill oil that is suitable for oral administration.
`See Ex. 1001, 35:44–48, 36:38–44. Claims 2 through 14 depend directly or
`indirectly from claim 1, and claims 16–20 depend directly from claim 15.
`Claim 1 is illustrative and recites, with emphasis added on the
`language primarily at issue in this proceeding:
`1.
`Encapsulated krill oil comprising a capsule
`containing Euphausia superba krill oil suitable for oral
`administration, said krill oil comprising greater than 30%
`phosphatidylcholine w/w of said krill oil, less than 3% free fatty
`acids w/w of said krill oil and astaxanthin esters.
`Id. at 35:44–48.
`F. Prior Art and Asserted Grounds of Unpatentability
`Petitioner argues that claims 1 through 20 of the ’567 patent are
`unpatentable based on the following four grounds:
`
`6
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`IPR2020-01534
`Patent 10,010,567 B2
`Claims Challenged
`1–5, 7–11, 15–17
`
`6, 14, 20
`
`12, 18
`
`13, 19
`
`35 U.S.C. §
`103(a)2
`
`103(a)
`
`103(a)
`
`103(a)
`
`References
`Sampalis I, 3 Botinno II,4
`Randolph5
`Sampalis I, Bottino II,
`Randolph, Breivik II6
`Sampalis, I, Bottino II,
`Randolph, Bottino I7
`Sampalis I, Bottino II,
`Randolph, Fricke,8 Yamaguchi,9
`Hardardottir10
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, and 112,
`effective March 16, 2013. Because the ’567 patent issued from a series of
`continuation applications the first of which was filed prior to the effective
`date of the AIA, we apply the pre-AIA version of 35 U.S.C. § 103.
`3 Fotini Sampalis et al., “Evaluation of the Effects of Neptune Krill
`Oil™ on the Management of Premenstrual Syndrome and Dysmenorrhea,”
`8 ALTERN. MED. REV. 171-179 (2003) (Ex. 1012, “Sampalis I”).
`4 Nestor R. Bottino, “Lipid Composition of Two Species of Antarctic Krill:
`Euphausia Superba and E. Crystallorophias,” 50B COMP.
`BIOCHEM. PHYSIOL. 479–484 (1975) (Ex. 1038, “Bottino II”).
`5 Russell K. Randolph and Haeri Roh-Schmidt, US 2005/0058728 A1,
`published Mar. 17, 2005 (Ex. 1011, “Randolph”).
`6 Harald Breivik, WO 2008/060163 A1, published May 22, 2008 (Ex. 1037,
`“Breivik II”).
`7 N. R. Bottino, “The Fatty Acids of Antarctic Phytoplankton and
`Euphausiids. Fatty Acid Exchange among Trophic Levels of the
`Ross Sea,” 27 MARINE BIOLOGY 197-204 (1974) (Ex. 1007, “Bottino I”).
`8 H. Fricke et al., “Lipid, Sterol and Fatty Acid Composition of Antarctic
`Krill (Euphausia superba Dana),” 19 LIPIDS 821-827 (1984) (Ex. 1010,
`“Fricke”).
`9 Katsumi Yamaguchi, et al., “Supercritical carbon dioxide extraction of oils
`from Antarctic krill,” 34 J. AGRIC. FOOD CHEM. 904–907 (1986) (Ex. 1162,
`“Yamaguchi”).
`10 Ingibjorg Hardardottir and John E. Kinsella, “Extraction of Lipid and
`Cholesterol from Fish Muscle with Supercri ical Fluids,” 53 J. OF FOOD
`SCIENCE 1656-1658 (1988) (Ex. 1164, “Hardardottir”).
`
`7
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`

`IPR2020-01534
`Patent 10,010,567 B2
`
`Petitioner submits the Declarations of Stephen J. Tallon in support of
`its Petition. See Ex. 1006 (“Tallon Declaration”); Ex. 1086 (“Tallon Reply
`Declaration”). Patent Owner submits the Declaration of Dr. Jacek Jaczynski
`in support of its Response. See Ex. 2001 (“Jaczynski Declaration”).
`
`II. ANALYSIS
`A. Principles of Law
`1.
`Burden
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). Therefore, in an inter partes
`review, the burden of proof is on the Petitioner to show that the challenged
`claims are unpatentable, and that burden never shifts to the patentee. See 35
`U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375
`(Fed. Cir. 2016) (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1378 (Fed. Cir. 2015)).
`
`Obviousness
`2.
`To ultimately prevail in its challenge to Patent Owner’s claims,
`Petitioner must demonstrate by a preponderance of the evidence11 that the
`claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A patent
`
`
`11 The burden of showing something by a preponderance of the evidence
`requires the trier of fact to believe that the existence of a fact is more
`probable than its nonexistence before the trier of fact may find in favor of
`the party who carries the burden. Concrete Pipe & Prods. of Cal., Inc. v.
`Constr. Laborers Pension Tr. for S. Cal., 508 U.S. 602, 622 (1993).
`
`8
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`IPR2020-01534
`Patent 10,010,567 B2
`claim is unpatentable under 35 U.S.C. § 103 if the differences between the
`claimed subject matter and the prior art are such that the subject matter as a
`whole would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains
`(“POSA” or “POSITA”). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness.12 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In determining obviousness when all elements of a claim are found in
`various pieces of prior art, “the factfinder must further consider the factual
`questions of whether a person of ordinary skill in the art would be motivated
`to combine those references, and whether in making that combination, a
`person of ordinary skill would have had a reasonable expectation of
`success.” Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015);
`see also WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed.
`Cir. 1999) (“When an obviousness determination relies on the combination
`of two or more references, there must be some suggestion or motivation to
`combine the references.”). “Both the suggestion and the expectation of
`success must be founded in the prior art, not in the applicant’s disclosure.”
`In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988); see also In re
`Magnum Oil Tools, 829 F.3d at 1381, 1381 (finding a party that petitions the
`Board for a determination of unpatentability based on obviousness must
`
`
`12 Patent Owner also does not present any objective evidence of
`nonobviousness.
`
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`

`IPR2020-01534
`Patent 10,010,567 B2
`show that “a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
`doing so.”) (internal quotations and citations omitted).
`An obviousness analysis “need not seek out precise teachings directed
`to the specific subject matter of the challenged claim, for a court can take
`account of the inferences and creative steps that a person of ordinary skill in
`the art would employ.” KSR, 550 U.S. at 418; see In re Translogic Tech,
`Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). In KSR, the Supreme Court also
`stated that an invention may be found obvious if trying a course of conduct
`would have been obvious to a POSITA:
`When there is a design need or market pressure to solve a
`problem and there are a finite number of identified, predictable
`solutions, a person of ordinary skill has good reason to pursue
`the known options within his or her technical grasp. If this leads
`to the anticipated success, it is likely the product not of
`innovation but of ordinary skill and common sense. In that
`instance the fact that a combination was obvious to try might
`show that it was obvious under § 103.
`550 U.S. at 421. “KSR affirmed the logical inverse of this statement by
`stating that § 103 bars patentability unless ‘the improvement is more than
`the predictable use of prior art elements according to their established
`functions.’” In re Kubin, 561 F.3d 1351, 1359–60 (Fed. Cir. 2009) (citing
`KSR, 550 U.S. at 417).
`We analyze the asserted grounds of unpatentability in accordance with
`the above-stated principles.
`
`B. Level of Ordinary Skill in the Art
`We consider the asserted grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art. KSR, 550 U.S. at 399
`
`10
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`

`IPR2020-01534
`Patent 10,010,567 B2
`(stating that obviousness is determined against the backdrop of the scope and
`content of the prior art, the differences between the prior art and the claims
`at issue, and the level of ordinary skill in the art). Factual indicators of the
`level of ordinary skill in the art include “the various prior art approaches
`employed, the types of problems encountered in the art, the rapidity with
`which innovations are made, the sophistication of the technology involved,
`and the educational background of those actively working in the field.”
`Jacobson Bros., Inc. v. U.S., 512 F.2d 1065, 1071 (Ct. Cl. 1975); see also
`Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983)
`(quoting with approval Jacobson Bros.).
`Petitioner offers a definition of the hypothetical person of ordinary
`skill in the art as of March 28, 2007, the earliest priority date to which the
`’567 patent claims priority. Pet. 9; see Ex. 1001, codes (60), (63). Petitioner
`asserts that:
`a POSITA would have held an advanced degree in marine
`sciences, biochemistry, organic (especially lipid) chemistry,
`chemical or process engineering, or associated sciences with
`complementary understanding, either through education or
`experience, of organic chemistry and in particular lipid
`chemistry, chemical or process engineering, marine biology,
`nutrition or associated sciences; and knowledge of or
`experience in the field of extraction. In addition, a POSITA
`would have had at least five years of applied experience.
`Pet. 9 (citing Ex. 1006 ¶¶ 36–37).
`
`Patent Owner’s declarant, Dr. Jaczynski, accepted Petitioner’s
`definition of a POSITA, see Ex. 2001 ¶ 8, and further commented that
`“[t]he relevant field for the ’567 patent includes extraction of lipids
`from natural sources,” see id. ¶ 7. Dr. Jaczynski further stated that he
`considers himself to be an expert in the relevant field. Id.
`
`11
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`IPR2020-01534
`Patent 10,010,567 B2
`
`We find that Petitioner’s definition of a POSITA is consistent
`with the level of skill reflected in the Specification and the asserted
`prior art references, and apply it for purposes of this decision. See
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior
`art itself can reflect the appropriate level of ordinary skill in the art).
`We also find that both Dr. Tallon and Dr. Jaczynski are qualified to
`opine about how one of skill in the art would view the teachings of the
`asserted combinations of art in Petitioner’s challenges to the claims.
`See Ex. 1006 ¶¶ 7–21, Appendix D (Curriculum Vitae of Dr. Tallon);
`Ex. 2002, Appendix A (Curriculum Vitae of Dr.Jaczynski).
`
`A. Claim Construction
`In this proceeding, the claims of the ’567 patent are construed “using
`the same claim construction standard that would be used to construe the
`claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b)
`(2018). Under that standard, the words of a claim are generally given their
`“ordinary and customary meaning,” which is the meaning the term would
`have had to a person of ordinary skill at the time of the invention, in the
`context of the entire patent including the specification. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
`Petitioner provides proposed claim constructions for the terms “krill
`oil,” “astaxanthin esters,” and “phytonutrient.” Pet. 39–42. Petitioner
`asserts that the appropriate construction of “krill oil” is “lipids extracted
`from krill,” based on several citations to the Specification of the ’567 patent
`and Dr. Tallon’s testimony. See Pet. 39–40 (citing Ex. 1001, 6:2–11, 3:3–6,
`5:51–57, 6:66–7:1, 7:33–35; Ex. 1006 ¶¶ 88–101). Petitioner asserts that
`the phrase “astaxanthin ester” should be construed as “[a]n astaxanthin
`
`12
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`IPR2020-01534
`Patent 10,010,567 B2
`molecule in which one or both of the hydroxyl groups are replaced by a
`fatty acid tail connected to the astaxanthin molecule through an ester bond,”
`see Pet 40–41 (citing Ex. 1001, 9:20–36; Ex. 1006 ¶¶ 102–113), and
`“phytonutrient” should be construed as “a plant-derived compound that has
`a positive impact on human health or nutrition,” see Pet. 41–42 (citing
`Ex. 1001, 15:56–67; Ex. 1018, 1–2; Ex. 1006 ¶¶ 114–117).
`Patent Owner responds that no claim construction is needed to
`resolve the issues in this case. See Resp. 7. Patent Owner also points out
`that Dr. Tallon referred to the broadest reasonable construction standard in
`construing the above-referenced claim terms, and not the appropriate claim
`construction standard that is applied in a civil action under 35 U.S.C.
`§ 282(b). See id. (citing Ex. 1006 ¶ 30). Based on this mistake, Patent
`Owner asserts that Dr. Tallon’s testimony concerning the appropriate
`construction of claim terms in the ’567 patent upon which Petitioner relies
`should be given little weight. See id.13
`At the institution stage of this proceeding, we stated that “[u]pon
`review of the arguments and evidence presented at this stage of the
`proceeding, we determine that construction of the identified claim terms is
`not necessary for purposes of this Decision.” Dec. 7–9 (citing see Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(only terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy)).
`At this final stage of the proceeding, we again determine that no
`construction of any claim term for which Petitioner has proposed a
`
`
`13 Petitioner points out that Dr. Tallon testified that his constructions would
`be the same under the Phillips standard. Reply 6, n.2 (citing Ex. 1086 ¶ 6).
`
`13
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`IPR2020-01534
`Patent 10,010,567 B2
`definition is necessary to resolve the disputes between the parties here as
`the limitation upon which we resolve this case does not involve these claim
`terms.
`
`B. Collateral Estoppel
`Petitioner asserts that factual findings and conclusions of law
`regarding teachings of the prior art, the motivation to combine those
`teachings, and claim construction in previous Board decisions involving
`patents owned by Patent Owner that are related to the ’567 patent should be
`given preclusive effect here under the doctrine of collateral estoppel. Pet. 2,
`42–44. Petitioner states that with the exception of Hardardottir and
`Yamaguchi, all other references upon which Petitioner relies to challenge the
`claims of the ’567 patent are the same as
`was previously relied on and applied by the Board in finding all
`claims of Patent Owner’s related ’453, ’765, ’905, ’877 and
`’572 patent obvious . . . .
`The claims of the ’567 patent and the claims of the ’453,
`’765, ’905, ’877 and [’]752 patents recite virtually identical
`krill oil compositions having many of the same ranges of
`phosphatidylcholine (i.e., at least 30%) and astaxanthin esters
`(i.e., greater than 100 mg/kg), omega-3 fatty acids (i.e., greater
`than 20% and triglycerides (i.e., 20–50%).
`Pet. 43–44. Notably absent from Petitioner’s list of components of claimed
`krill oil compositions is any claimed amount of free fatty acids.
`
`Patent Owner responds that Petitioner failed to provide any analysis
`under the applicable standards for collateral estoppel as found in Ohio
`Willow Wood Co. v. Alps South, LLC, 735 F.3d 133, 1342 (Fed. Cir. 2013),
`which was cited by Petitioner and requires a four-pronged analysis. Thus,
`Patent Owner concludes that Petitioner’s failure of proof dooms its collateral
`estoppel argument. Resp. 8.
`
`14
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`IPR2020-01534
`Patent 10,010,567 B2
`Patent Owner also asserts that even if we reach the merits of
`Petitioner’s collateral estoppel argument, it fails on the merits “because the
`‘less than 3% w/w free fatty acids’ claim element [that is required by both
`independent claims] was not present in any of the claims examined in the
`prior IPRs.” Resp. 9. Patent Owner concludes that “[a]s a result, this is the
`first time that the issue of whether or not Bottino II teaches an extract with
`less than 3% free fatty acids w/w has been presented to the Board,” id. at 10,
`and thus, does not present an identical issue that was actually litigated and
`adjudicated previously by the Board as required by a collateral estoppel
`analysis, see id. 11–12 (citing Stephen Slesinger, Inc. v. Disney Enters., Inc.,
`702 F.3d 640, 644 (Fed. Cir. 2012)).
`
`In response, Petitioner does not address Patent Owner’s argument that
`no prior Board decision addressed the claim limitation “less than 3% w/w
`free fatty acids” in any challenged claim of the previously adjudicated
`related patents. See Reply 4. Instead, Petitioner responds concerning a
`different limitation that it asserts is taught by the art, Yamaguchi and
`Hardardottir, that was not asserted in the previous challenges. Id. Petitioner
`states:
`
`With the exception of Yamaguchi and Hardardottir that
`teach and disclose the cholesterol limitation recited in
`dependent claims 13 and 19, Petitioner’s references were
`analyzed by the Board in the Final Written Decisions finding
`five other “krill oil” patents in the same family as the ‘567
`patent unpatentable. Exhibits 1103-1104, 1129, 1157-1159.
`Patent Owner, however, wants the Board to ignore its previous
`analyses of this same prior art. POR, 8-12. Because the
`inclusion of a limitation in two dependent claims requiring the
`recited krill oil have “less than about 0.5 g/100 g total
`cholesterol” does not materially alter the question of the ‘567
`patent’s unpatentability, collateral estoppel is applicable. See
`Swartz v. USPTO, 743 F. App’x 426, 428 (Fed. Cir. 2018).
`
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`IPR2020-01534
`Patent 10,010,567 B2
`Reply, 4.
`
`Patent Owner asserts that Petitioner’s non sequitur argument
`concerning limitations in dependent claims “is an attempt to side-step the
`issue raised by Patent Owner in its Response . . . that both independent
`claims of the ’567 patent include the limitation of ‘less than 3% w/w free
`fatty acids’ which had not been previously addressed in any decision by the
`Board.” Sur-Reply 4 (citing Resp. 10–12). Patent Owner concludes:
`As explained in the PO Response, this is a completely new
`claim element that has not been previously adjudicated and
`which materially alters the question of invalidity. Petitioner’s
`attempt to redirect the Board’s attention to a different claim
`limitation in the dependent claims regarding cholesterol both
`ignores Patent Owner’s arguments which specifically apply the
`relevant standards for collateral estoppel and evidences a
`misunderstanding of the law of collateral estoppel. Indeed,
`Petitioner has made no attempt to address PO’s arguments in its
`Response regarding the application elements for establishing
`whether collateral estoppel exists.
`Id. (citing Resp. 11).
`
`1.
`Analysis
`We agree with Patent Owner that Petitioner has failed to provide
`sufficient analysis as to how collateral estoppel applies here. We find that
`Petitioner’s collateral estoppel argument fails on the merits.
`“Collateral estoppel protects a party from having to litigate issues that
`have been fully and fairly tried in a previous action and adversely resolved
`against a party-opponent.” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d
`1333, 1342 (Fed. Cir. 2013) (citing Pharmacia & Upjohn Co. v. Mylan
`Pharm., Inc., 170 F.3d 1373, 1379 (Fed. Cir. 1999)). To prove collateral
`estoppel, a party must show the following:
`
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`IPR2020-01534
`Patent 10,010,567 B2
`(1) that in the prior action the party against whom estoppel is
`sought had a full and fair opportunity to litigate the issue:
`(2) the issue was actually litigated;
`(3) the controlling facts and applicable legal rules were the same
`in both actions;
`(4) resolution of the particular issue was essential to the final
`judgment in the first action; and
`(5) the identical issue was decided in the first action.
`See Comair Rotron, Inc. v. Nippon Densan Corp., 49 F.3d 1535, 1537 (Fed.
`Cir. 1995) (emphasis added). In considering collateral estoppel of
`adjudicated patent claims, the patent claims do not have to be identical;
`rather, “it is the identity of the issues that were litigated that determines
`whether collateral estoppel should apply.” Ohio Willow Wood, 735 F.3d at
`1342.
`Here, Petitioner provides us with an overview of the similarity of the
`
`art used in the previous cases before us involving related patents to the ’567
`patent and a general overview of the various components of allegedly
`“virtually identical krill oil compositions” without addressing a comparison
`of specific unpatentable claims of these related patents as compared to the
`specific claims at issue here. See Pet. 42–44. Notably, this overview of
`similar components of claimed krill oil compositions in the related patents
`does not address free fatty acids that are at the center of the dispute in this
`case. Id. Most notably, Petitioner fails to address the five criteria that we
`have listed above to establish that collateral estoppel applies in this case. Id.
`We agree with Patent Owner that this is a fatal flaw.
`
`Nowhere in the Petition does Petitioner provide an analysis of a
`previous Board decision where the issue of whether Bottino II teaches an
`extract with less than 3% free fatty acids w/w of said krill oil (an issue
`
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`IPR2020-01534
`Patent 10,010,567 B2
`central to resolution of the case here) was litigated, resolved by the Board,
`and essential to the judgment in that previous case. See Pet. 42–44.
`Therefore, Petitioner cannot show that the identical issue was decided in any
`previous case before us. Petitioner’s discussion of the similarity of art
`previously applied and a generalized overview of different components of
`various challenged claims of related patents is insufficient. Because
`Petitioner failed to apply the correct framework, we find that collateral
`estoppel does not preclude Patent Owner from addressing the issues raised in
`this inter partes review.
`
`We also find, as Patent Owner asserts, that Petitioner’s collateral
`estoppel argument fails on the merits “because the ‘less than 3% free fatty
`acids w/w of said krill oil” claim element that is required by both
`independent claims at issue here was not present in any of the claims for
`which unpatentability was determined in the prior inter partes reviews. See
`Ex. 1116, 35:47–36:62 (claims of the ’905 patent); Ex. 1117, 34:64–37:12
`(claims of the ’765 patent); Ex. 1118, 34:65–36:24 (claims of the ’752
`patent); Ex. 1067, 35:43–38:46 (claims of the ’453 patent); Ex. 1068, 34:59–
`36:25 (claims of the ’877 patent); see also Reply 4 (arguing the “less than
`about 0.5 g/100 g total cholesterol” limitation versus the “less than 3% w/w
`free fatty acids” limitation).
`Petitioner makes arguments for the first time at oral hearing
`concerning our alleged previous reliance on Table 2 of Bottino II in finding
`claims of related patents unpatentable and provides new evidence of Patent
`Owner’s alleged failure to challenge the reliability of Table 2 of Bottino II.
`See Tr. 8:7–9:3; Petitioner’s Demonstratives, slide 8. We find that these
`belated arguments and evidence are inappropriately raised for the first time
`at oral argument, and we need not consider them. See Patent Trial and
`
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`IPR2020-01534
`Patent 10,010,567 B2
`Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019) (“Petitioner
`may not submit new evidence or argument in reply that it could have
`presented earlier, e.g. to make out a prima facie case of unpatentability.”)
`(citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir.
`2015)).
`We do note, however, that the evidence upon which Petitioner relies
`that is of record here, but not addressed in Petitioner’s papers, does not
`address the central question here of whether Table 2 of Bottino II teaches
`“less than 3% free fatty acids w/w of said krill oil.” See Ex. 1157, 28
`(relying on Bottino for disclosure of the triglyceride content of polar krill
`oil); Ex. 1158, 28 (same). Petitioner cites to page 28 of Patent Owner’s
`Response in IPR2020-01533, which was not made of record here, in its
`Demonstrative Slide 8 and Slide 25 to establish that Patent Owner did not
`dispute that Table 2 of Bottino II discloses krill oil extract with less than 3%
`free fatty acids. This citation to Patent Owner’s Response appears to address
`the prior art status