Rimfrost As v. Aker Biomarine Antarctic As

1. Case Identification

• Case #: IPR2020-01533
• Patent #: 9,816,046
• Filed: September 30, 2020
• Petitioner(s): Rimfrost AS
• Patent Owner(s): Aker Biomarine Antarctic AS
• Challenged Claims: 1-19

2. Patent Overview

• Title: Bioeffective Krill Oil Compositions
• Brief Description: The ’046 patent discloses methods for producing krill oil compositions. The methods involve processing krill to destroy the activity of naturally present enzymes (lipases and phospholipases), storing the resulting krill meal for a period, and subsequently extracting the oil using a polar solvent to obtain a product with specific compositional properties.

3. Grounds for Unpatentability

Ground 1: Obviousness over the Combination of Six References - Claims 1-10 are obvious over Breivik II, Yoshitomi, Budziński, Fricke, Bottino II, and Sampalis I.

• Prior Art Relied Upon: Breivik II (WO 2008/060163), Yoshitomi (Application # 2003/0113432), Budzinski (a 1985 FAO technical paper), Fricke (a 1984 journal article), Bottino II (a 1975 journal article), and Sampalis I (a 2003 journal article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of references taught every element of independent claim 1. Yoshitomi and Budziński disclosed producing a stable krill meal by heating krill to denature its enzymes. Budziński and Fricke taught that such denatured krill meal could be stored for extended periods (e.g., over 13 months). Breivik II, Fricke, and Bottino II described extracting lipids from krill using polar solvents (e.g., ethanol). Furthermore, Bottino II disclosed a resulting krill oil extract containing 48% phosphatidylcholine (meeting the >30% limitation), <2% lysophosphatidylcholine, and at most 2% free fatty acids (meeting the <3% limitation). Breivik II taught that krill oil extracts contain astaxanthin esters. Dependent claims adding steps like grinding (Yoshitomi), heating (Yoshitomi, Budziński, Fricke), using chemicals (Breivik II), or encapsulating the oil (Sampalis I) were also allegedly rendered obvious by the combination.
  • Motivation to Combine: A POSITA would combine these teachings to create a high-quality, stable krill oil product for human consumption. The references all relate to processing krill, and the motivation was to use known denaturation and stabilization techniques (Yoshitomi, Budziński) to prevent spoilage before applying known solvent extraction methods (Breivik II, Fricke). Petitioner asserted that storing the denatured krill meal before extraction is a practical necessity for land-based processing, which is safer and more economical than at-sea extraction.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involved applying conventional, well-understood techniques for krill processing to achieve predictable results, such as obtaining a lipid profile similar to that disclosed by Bottino II.

Ground 2: Obviousness over the Combination plus Randolph - Claims 11-12 are obvious over Breivik II, Yoshitomi, Budziński, Fricke, Bottino II, and Randolph.

• Prior Art Relied Upon: The references from Ground 1, plus Randolph (Application # 2005/0058728).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the arguments for claims 1-10 and specifically addressed the astaxanthin ester concentration limitations of claims 11 (>100 mg/kg) and 12 (>200 mg/kg). Petitioner argued that Randolph disclosed krill oil compositions containing specified ranges of astaxanthin and krill oil. Based on the endpoints of these ranges, Randolph taught a composition with at least 158 mg/kg of astaxanthin esters, rendering claim 11 obvious. Further, Breivik II disclosed a commercial krill oil formulation with over 1,000 mg/kg astaxanthin esters.
  • Motivation to Combine: A POSITA, knowing from the art that astaxanthin is a beneficial antioxidant, would be motivated to look to references like Randolph and Breivik II to produce krill oil with desirable, health-promoting concentrations of astaxanthin esters. Achieving the claimed levels was merely the result of optimizing a known parameter.

Ground 3: Obviousness over a Consolidated Combination - Claims 13-19 are obvious over Breivik II, Budziński, Fricke, Yoshitomi, Bottino II, Randolph, and Sampalis I.

• Prior Art Relied Upon: Breivik II, Budziński, Fricke, Yoshitomi, Bottino II, Randolph, and Sampalis I.
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted independent claim 13, which Petitioner characterized as a combination of limitations already present in claims 1, 2, 9, and 11. Specifically, claim 13 recited the method of claim 1 but expressly required the use of Euphausia superba krill, less than 3% free fatty acids, and at least 100 mg/kg astaxanthin esters. Petitioner argued that the obviousness of each of these individual elements was demonstrated in the arguments for the preceding grounds, and combining them into a single method was likewise obvious.
  • Motivation to Combine: The motivation was the same as for the prior grounds: to produce a stable, high-quality krill oil product with a known composition and health benefits. A POSITA would naturally use Euphausia superba, the most common commercial species, and would seek to achieve the known beneficial composition (low free fatty acids, high astaxanthin) taught by the prior art.

4. Key Claim Construction Positions

• "destroy the activity of lipases and phospholipases": Petitioner argued this term should be construed to mean "denature lipases and phospholipases." This construction was based on the patent's specification, which repeatedly uses the term "denature," and the applicant's arguments during prosecution that equated the two phrases to overcome a rejection under 35 U.S.C. §112.
• "krill meal": Petitioner proposed this term means "processed krill with reduced water content from which krill oil can be extracted." This construction was derived from intrinsic evidence (e.g., examples in the ’046 patent) and extrinsic evidence (e.g., Yoshitomi) showing that krill meal is the stable, low-water-content product resulting from the initial processing steps.
• "astaxanthin ester": Proposed to mean "[a]n astaxanthin 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."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate because the core prior art references and combinations asserted in the petition were never applied or considered by the Examiner during prosecution. The prosecution history was silent on these references, and no prior art rejections were ever made. Therefore, Petitioner contended the Examiner materially erred by overlooking these dispositive teachings.
• Petitioner also argued that collateral estoppel should apply, as the Board had issued multiple Final Written Decisions invalidating claims in five related patents (sharing the same specification) over many of the same prior art references.

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-19 of the ’046 patent as unpatentable under 35 U.S.C. §103.