IPR nonobviousness decision affirmed in part because secondary evidence does not need to be “precisely limited to the point of novelty”

Henny Penny Corporation v. Frymaster LLC

Docket No. 2018-1596 (IPR2016-01435)
September 12, 2019

Brief Summary: PTAB IPR holding of nonobviousness affirmed (no motivation to combine, secondary evidence does not need to be “precisely limited to the point of novelty”).

Summary: Henny Penny (HPC) appealed PTAB IPR decision holding the challenged claims of Frymaster’s US 8,497,691 relating to deep fryers including a sensor external to the fryer pot for measuring “total polar materials (‘TPMs’)” in cooking oil not unpatentable as obvious over US 5,071,527 (“Kauffman”) and JP 2005-55198 (“Iwaguchi”). HPC’s original obviousness arguments alleged that “Kauffman expressly discloses each limitation except for the sensor”, and that “Iwaguchi would have motivated a person of ordinary skill to provide sensor”, and the PTAB instituted IPR. Frymaster responded, and then HPC argued Iwaguchi “was actually unnecessary”. The PTAB agreed with Frymaster that HPC’s reply presented “a new theory of unpatentability not presented in the petition or instituted”. In its final written decision (FWD), the PTAB disregarded the new arguments “as an impermissible new theory of unpatentability raised for the first time on reply”, found no motivation to integrate Iwaguchi’s TPM sensor into Kauffman’s system, and that evidence of secondary considerations supported nonobviousness” (“praise from two industry organizations and one customer…a presumption of nexus between the objective evidence and the” product as HPC conceded that point). The FC panel reviewed the PTAB’s legal determinations de novo and the underlying factual findings for substantial evidence (In re Elsner, FC 2004; In re Gartside, FC 2000; Consol. Edison, US 1938). HPC argued the PTAB erred by “too narrowly construing the petition”, but the FC panel disagreed (e.g., “an IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious” (37 CFR § 42.23(b); “the petition says nothing about using Kauffman’s measured electrical parameters to calculate TPM levels” and “[n]or did HPC submit any expert testimony with its petition about how to do so”). HPC also argued the Board erred “in its conclusion of nonobviousness” by “mistakenly [finding] no motivation to combine” and finding the secondary consideration evidence “probative of nonobviousness.” HPC argued “that the Board placed undue weight on the disadvantages of introducing Iwaguchi’s TPM sensor into Kauffman’s system”, but the FC panel no error on this point (e.g., Winner, FC 2000 (“[T]he benefits, both lost and gained, should be weighed against one another.”); “the prior art must be considered for all its teachings, not selectively” (Merck, FC 2015; Panduit, FC 1987; In re Pagliaro, CCPA 1981)). Regarding the secondary considerations, the FC panel explained that “the objective evidence is entitled to a rebuttable presumption of nexus” if it is “tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them’” (Polaris, FC 2018 (“when…the patented invention is only a small component of the product…there is no presumption”, “the identified objective indicia must be directed to what was not known in the prior art” (see also Novartis AG, FC 2017); WBIP, FC 2016 (claimed combination can serve as the nexus)), and that the PTAB did not err in its analysis (e.g., “industry praise is probative of nonobviousness even if it was not precisely limited to the point of novelty of the claimed combination”).

This entry was posted in Inter Parties Review (IPR), IPR, Obviousness, Uncategorized. Bookmark the permalink.

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