Docket No. 2017-1193 (IPR2015-00249)
DYK, REYNA, CHEN
March 13, 2018
Brief summary: Citing Omega Eng’g (FC 2003) holding “that the same construed meaning should generally attach to the same claim term in related patents”, the FC panel vacated and remanded the decision, instructing the PTAB that “‘aseptic’ [means] the ‘FDA level of aseptic,’ as detailed in our prior opinion” (under collateral estoppel).
Summary: Nestle appealed from PTAB FWD following IPR finding claim 9 of Steuben’s US 6,481,468 B1 directed to aseptic packaging of food products not obvious. In a previous appeal following IPR of related US 6,945,013 B2 (the ‘468 and ‘013 patents claiming priority to the same provisional and sharing “substantially similar descriptions of the claimed inventions”), the FC panel vacated the PTAB’s construction of “aseptic” and instead relied “on binding lexicography in the specification…to construe the term to mean the ‘FDA level of aseptic’”. In this appeal, Nestle “raise[d] arguments against the [PTAB’s] construction of ‘aseptic’ similar to those raised in the prior appeal”. The FC panel explained that “[c]ollateral 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, FC 2013), and that “collateral estoppel, also known as issue preclusion, applies in the administrative context” (Maxilinear, FC 2018). The FC panel also explained “aseptic” is used “in a similar fashion” in the claims of both patents, “[m]ore critically, the two patents also provide identical lexicography for the term…in their specifications”, and that “[n]either party has pointed to any material difference between the two patents or their prosecution histories that would give rise to claim construction issues in this appeal different from those raised in the prior appeal.” Thus, the FC panel wrote, “Steuben Foods has had a full and fair opportunity to litigate the issue of claim construction during the prior appeal” and “therefore,…collateral estoppel protects Nestle and obviates the need to revisit an issue that was already resolved against Steuben Foods” (“collateral estoppel is not limited ‘to patent claims that are identical’” (Ohio Willow Wood, FC 2013). Citing Omega Eng’g (FC 2003) holding “that the same construed meaning should generally attach to the same claim term in related patents”, the FC panel vacated and remanded the decision, instructing the PTAB that “‘aseptic’ [means] the ‘FDA level of aseptic,’ as detailed in our prior opinion.”