In a so-called Inter Partes Review by the United States Patent and Trademark Office (USPTO), Rimfrost garnered what it trumpeted in a press release as a ‘full victory.’ The panel agreed with Rimfrost's argument that two of Aker’s patents—referred to as the 877 patent and the 905 patent—included claims that are not patentable. In other words, the processes described in these patents are not unique or novel enough to restrict their use to only one company.
The USPTO review was a sideshow of sorts to a lawsuit that is ongoing between the two parties in a Delaware court. That suit was put on hold at the agreement of the two parties so that the patent issue could be sorted out.
Rimfrost: Way is cleared into US market
Rimfrost had filed two petitions attacking the claims for each patent. This is a common strategy in that the USPTO’s Patent Trial and Appeal Board (PTAB) has a word limit on petitions. So if a petitioner wants to make additional arguments, these are packaged in additional submissions. The board ruled in Rimfrost’s favor on one of the two petitions in each case, invalidating each patent.
“We hope this will once and for all settle any confusion created by Aker Biomarine in the US market. No legal process in the USA concerning its patents has gone in Aker Biomarine’s favor. That means the uncertainty which Aker Biomarine has sought to create around our products and ability to deliver is now repudiated,” said Stig Remoy, CEO and principal owner of Rimfrost, in a statement supplied to NutraIngredients-USA.
Remoy said the ruling will further open the door for Rimfrost in the US market, which is the world’s largest for krill oil products. Rimfrost continues to sell krill oil products using raw material purchased from third parties.
According to the company, Rimfrost is also making progress on purchasing a new vessel to harvest krill in Antarctic waters. The company lost its only vessel in 2016 when it went through financial difficulties. That vessel, the Juvel, is now part of Aker’s fleet. Rimfrost says it still holds a license to harvest krill, and is applying for a second license.
Aker: This will be a long race
For his part, Aker BioMarine CEO Matts Johansen scoffed at the notion that Rimfrost can declare victory. In his view, Aker’s competitor might have won a battle. But this is a war.
“Rimfrost claiming a complete victory in this process is like celebrating victory after a mile in a marathon race. In October last year, The European Patent Office upheld the validity of the same patent family and rejected Rimfrost’s opposition after two oral hearings,” Johansen said.
“Early in the process, we became aware of the weaknesses in these two patents and have since upgraded this particular patent family. The outcome of this hearing was therefore as expected. However, we wanted to see how the United States Patent and Trademark Office argued in their decisions,” he added.
“As to the court case in Delaware, we are in the beginning of the race. We still get new patents granted to us in this important patent family. These new patents are not affected by the weaknesses found by the USPTO PTAB for these two patents,” Johansen concluded.
Review process not a friendly one for patent holders
An attorney in the law firm that represented Aker in the matter, CasimirJones, echoed Johansen’s take on the matter.
“The Inter Partes Review (IPR) process at the USPTO is very negative to patent owners and the majority of patents and claims are invalidated in these processes. There were four total IPRs filed against two Aker Biomarine patents. While the PTAB did side with Rimfrost in two of the IPRS, in two of their decisions the USPTO PTAB sided with Aker BioMarine. Even though the net result is that the two patents are currently invalidated by the IPR process, the decisions provide Aker Biomarine with valuable input so that we can better defend the remaining siblings in the patent family from similar attacks,” said J. Mitchell Jones.
Importance of having a ‘family’
Scott Bialecki, an attorney specializing in patent law with the firm Faegre Baker Daniels, said the concept of ‘families’ is an important one in patent law. He illustrated the point with an example of a patent on a wheel with a pneumatic tire mounted on it. It would behoove the owner of that patent to also get a patent on a wheel, mounted with a tire, that is also supplied with a valve stem projecting through the wheel for the purpose of filling up the tire. And so forth.
“What this does show is what we advise our clients to do, to always try to have ‘live’ families of patents. You want to have new patent applications in the hopper so that if things like this happen you can fix them as time goes on,” Bialecki said.
In the case of Aker’s patents, while the PTAB action invalidates 20 or so claims for each patent, Johansen said the patent family has been bolstered with an additional 200 or so claims.