Federal Circuit Affirmed Obviousness of ‘435 Patent Claims

Federal CircuitSteuben Foods, Inc. v. Nestle USA, Inc., No. 2017-1290, 2018 (Fed. Cir. Mar. 13, 2018) (Before Dyk, Reyna, and Hughes, J.) (Opinion for the court, Hughes, J.)

The ’435 patent, owned by Steuben, is directed to a sterilization tunnel pressurized with sterile air, as part of aseptic packaging of food products. After Nestle challenged the ’435 patent in an inter partes review, the Board found a number of the claims obvious and unpatentable. The claims recited a specific sterilant concentration levels in the different zones of the sterilization tunnel.  Steuben appealed, and the Federal Circuit affirmed.

First, the Board’s construction of “sterilant concentration levels” was not erroneous. These are levels measured “at any point within the sterilization tunnel –including the ‘residual’ concentration on bottle surfaces.” The specification referred to zones with “different concentration levels of gas laden sterilant (e.g., hydrogen peroxide in air)” as well as to residual concentration of hydrogen peroxide on the lids and surface on the bottles. The broadest reasonable construction of “sterilant concentration levels” encompassed both the “gas laden” (or “in air”) sterilant levels and the residual sterilant levels.  Nothing in the specification or the claims supported a construction limited to one or excluding the other.

Second, substantial evidence supported the Board’s obviousness determination.  Contrary to Steuben’s contention that none of the references disclosed maintaining sterilant concentration levels of “at least about 5 to 1” or “at least about 1,000 ppm to 0.1 ppm” in the different zones, they did teach maintaining a ratio of 300,000 ppm to 0.5 ppm, which fairly suggested “at least about 5 to 1” or “at least about 1,000 ppm to 0.1 ppm.” The claims were thus obvious and unpatentable.

Take Away

In an IPR, a claim term will be given its broadest reasonable construction consistent with the specification, and will not be restricted to one embodiment or another, absent a limiting disclosure by the inventor.

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Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

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