Earlier this month, in Aker Biomarine Antarctic AS v. Rimfrost AS, the Federal Circuit affirmed two final written decisions by the U.S. Patent and Trademark Office Patent Trial and Appeal Board finding claims 1-19 of U.S. Patent No. 9,028,877 and claims 1-20 of 9,078,905 to be unpatentable as obvious. The '877 and '905 patents, which concern bioeffective krill oil, are assigned to Aker Biomarine Antarctic AS.
According to the patents, krill oil can be useful for "decreasing cholesterol, inhibiting platelet adhesion, inhibiting artery plaque formation, preventing hyper-tension, controlling arthritis symptoms, preventing skin cancer, enhancing transdermal transport, reducing . . . pre-menstrual symptoms or controlling blood glucose levels in a patient." However, the patents also disclose that antarctic krill is challenging to use to produce krill oil because lipases degrade the oil during storage and transport. Antarctic krill are small, swimming crustaceans found in the Antarctic waters of the Southern Ocean. The '877 patent claims a method of producing krill oil and encapsulating it, and the '905 patent claims encapsulated krill oil of various compositions. Claim 1 of the '877 patent, which the opinion indicates is exemplary, recites:
1. A method of production of krill oil comprising:
a) providing krill;
b) treating said krill to denature lipases and phospholipases in said krill to provide a denatured krill product; and
c) extracting oil from said denatured krill product with a polar solvent to provide a krill oil with from about 3% to about 10% w/w ether phospholipids; from about 27% to 50% w/w non-ether phospholipids so that the amount of total phospholipids in said krill oil is from about 30% to 60% w/w; and from about 20% to 50% w/w triglycerides, wherein said steps a and b are performed on a ship.
Claim 12 of the '905 patent, which the opinion indicates is exemplary, recites:
12. Encapsulated krill oil comprising:
a capsule containing an effective amount of krill oil, said krill oil comprising from about 3% to about 10% w/w ether phospholipids; from about 27% to 50% w/w non-ether phospholipids so that the amount of total phospholipids in the composition is from about 30% to 60% w/w; and from about 20% to 50% w/w triglycerides.
Rimfrost AS petitioned for inter partes review of both patents, and the Board determined that claims 1–19 of the '877 patent and claims 1–20 of the '905 patent would have been obvious in view of U.S. Patent Application Publication No. US 2010/0143571 ("Brievik"), International Publication No. WO 2007/123424 ("Catchpole"), and Fricke et al., Lipid, Sterol and Fatty Acid Composition of Antarctic Krill (Euphausia superba Dana), 19 LIPIDS 821 (1984) ("Fricke 1984") (with respect to claim limitations requiring treating the krill with heat to denature lipases and extracting the krill oil with a polar solvent), or Catchpole and Fricke 1984 (with respect to compositions, wherein Catchpole was relied on for disclosing the total, ether, and non-ether phospholipid parameters recited in the claims, and Fricke 1984 was relied on for disclosing the triglyceride levels recited in the claims). Before the Board, Aker disputed whether a person of skill would have been motivated to combine the references with a reasonable expectation of success and whether the prior art taught away from using krill oil to treat inflammatory conditions. The Board rejected those arguments and found the claims to be unpatentable as obvious. Aker appealed.
On appeal, Aker argued that a person of skill would not have been motivated to combine the asserted references, and with regard to the '905 patent, challenged the Board's finding that the prior art did not teach away from using krill oil to treat inflammatory conditions. With respect to its first argument, Aker contended that because the krill oils analyzed in the references were obtained using different starting materials and extraction methods, a person of skill in the art would not have combined the teachings of the references. In support of its argument, Aker pointed to the testimony of its expert, who opined that a person of skill in the art would have thought it was "not scientifically valid" to choose lipid components from multiple references, and that Rimfrost's expert admitted that the ether phospholipid content of Fricke 1984's krill oil was at most 1.5% (as opposed to "from about 3% to about 10%" as recited in Aker's claims).
The Federal Circuit disagreed with Aker's first argument, however, finding that the Board's decision was supported by substantial evidence. In particular, the Court indicated that "[a]fter weighing the evidence, the Board found that the lipid components of krill oil can be extracted using any number of suitable solvents, that the proportions of the components could be varied in predictable ways, and that the resulting extracts could be blended to produce a final krill oil product." While Aker asked the Court to credit the testimony of its expert over that of Rimfrost's expert, the Court determined that the Board was will within its discretion to credit Rimfrost's expert. With respect to Aker's argument that Rimfrost's expert admitted that the ether phospholipid content of Fricke 1984's krill oil was at most 1.5%, the Court indicated that it was "not persuaded that the Board relied on Fricke 1984's ether phospholipid content for its obviousness holding," finding instead, that "the Board relied on those values from Catchpole and combined them with the triglyceride content in Fricke 1984."
Regarding Aker's second argument that the prior art did not teach away from using krill oil to treat inflammatory conditions, the Court again disagreed, finding that the Board's decision was supported by substantial evidence. Although Aker cited Tanaka et al., 59 BIOSCI. BIOTECH. BIOCHEM. 1389 (1995), for the proposition that the art was concerned with the presence of ether phospholipids in foodstuffs such as krill oil, the Court explained that:
Here, perhaps most probative is the fact that, at the time of the invention, encapsulated krill oil was on sale and generally recognized as safe. Given that krill oil with ether phospholipids was on sale and, absent any evidence suggesting that the capsules were somehow pro-inflammatory or dangerous, the Board's finding that the art did not teach away from supplements containing krill oil is certainly supported by substantial evidence.
Finding the decisions of the Board holding claims 1–19 of the '877 patent and claims 1–20 of the '905 patent unpatentable as obvious to be supported by substantial evidence, the Court therefore affirmed the Board's decisions.
Aker Biomarine Antarctic AS v. Rimfrost AS (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Circuit Judges Lourie, Plager, and Taranto
Opinion by Circuit Judge Lourie
