Nestle Healthcare Nutrition, Inc.v.Steuben Foods, Inc.

Patent Trial and Appeal Board

May 4, 2015

09376992 (P.T.A.B. May. 4, 2015)

Trials@uspto.gov Paper No. 14
571-272-7822 May 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NESTLÉ HEALTHCARE NUTRITION, INC.,
Petitioner,

v.

STEUBEN FOODS, INC.,
Patent Owner.
____________

Case IPR2015˗00094
Patent 6,209,591
____________

Before PHILLIP J. KAUFFMAN, JAMES P. CALVE, and
BEVERLY M. BUNTING, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
Petitioner, Nestlé Healthcare Nutrition, Inc., filed a Petition (Paper 1,
“Pet.”) to institute an inter partes review of claims 1, 2, 16˗18, 26, and 27 of
U.S. Patent No. 6,209,591 B1
1
(Ex. 1001, “the ’591 patent”). Patent Owner,
Stueben Foods, Inc., filed a timely Preliminary Response (Paper 8, “Prelim.
Resp.”). After considering the record to this point in the proceeding, we
determine that Petitioner has not demonstrated a reasonable likelihood of
prevailing with respect to claims 1, 2, 16˗18, 26, and 27 of the ’591 patent.
See 35 U.S.C. §§ 6(b) and 314; 37 C.F.R. § 42.4(a).

II. BACKGROUND
A. Related Proceedings
As indicated in the table below, the ’591 patent is related to four other
U.S. patents, each the subject of a petition for inter partes review by Nestlé
Healthcare Nutrition, Inc.
U.S. Patent No. Nestlé petitions
6,945,013 2014-01235
6,475,435 2015-00195
6,209,591 2015-00094
6,481,468 2015-00249
6,536,188 2015-00023
The ’591 patent issued from ex parte reexamination before the Nestlé
petitions were filed. The ’591 patent is under inter partes reexamination
(control no. 90/012,533). Paper 4, 3.
Patent Owner has asserted the ’591 patent in the following pending
litigations in the U.S. District Court for the Western District of New York:

1
See also Reexamination certificate issued Nov. 25, 2013.
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Patent 6,209,591

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Steuben Foods, Inc. v. Oystar USA, Inc. et al., No. 1:2010-cv-00780 (filed
9/29/10); Steuben Foods, Inc. v. Shibuya Hoppmann Corp. et al., No.
1:2010-cv-00781 (filed 9/29/10); Steuben Foods, Inc. v. HP Hood LLC, No.
1:2012-cv-00211 (filed 3/12/12); Steuben Foods, Inc. v. GEA Process
Eng’g, Inc. et al., No. 1:2012-cv-00904-WMS-HKS (filed 9/24/12); Steuben
Foods, Inc. v. Nestlé, USA, No. 1:13-cv-00892 (filed 9/3/13); and Steuben
Foods, Inc. v. Jasper Prods., LLC, No. 1:13-cv-01118-WMS (filed
11/14/13). Pet. 49; Paper 4, 3˗4.

B. The Asserted Grounds and Prior Art
Petitioner presents the following grounds of unpatentability under
35 U.S.C. § 103:
References Claims challenged
Ondrus
2
, Hayashi
3
, Bev Tech
4
,
Takei
5
, and David
6

1, 2, 16˗18, 26, and 27
Ondrus, ZFL
7
, Bev Tech, Takei, and
David
1, 2, 16˗18, 26, and 27

2
Ex. 1006, U.S. Patent No. 5,746,239 (May 5, 1998).
3
Ex. 1007, Mitsuo Hayashi, New Technology for CAF Aseptic Filling,
Beverage Japan, No. 193 at 73–75 (Jan. 1998). Also at Exhibit 1014, with
translation affidavit.
4
Ex. 1009, Luigi Baiocchi, Latest Innovations In Aseptic Filling, Int’l Soc.
of Beverage Technologists, Prcdgs. of 44th Ann. Conf. “Bev Tech 97,” Ft.
Lauderdale, FL, Apr. 28-30, 1997, 123–130.
5
Ex. 1010, Japanese Pat. App. Publ. No. H4-154501 (with translation) (May
27, 1992).
6
Ex. 1005, J.R.D. David et al., Aseptic Processing and Packaging of Food:
A Food Industry Perspective, chs. 6, 8 (1996).
7
Ex. 1008, N. Buchner, Aseptic Filling of Glass and Plastic Containers, 41
ZFL Magazine, No. 5, 295–300 (with translation).
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C. The ’591 Patent (Ex. 1001)
The ’591 patent relates to an apparatus and method for aseptically
filling a series of bottles with a low-acid food product. Ex. 1001, 2:40–43.
The aseptic processing apparatus shown in Figure 3 is reproduced below:

Figure 3 is a partial cross sectional view of the aseptic processing apparatus.
Id. at 3:19˗20. In a preferred embodiment, processing apparatus 10 includes
bottle infeed, sterilization, and conveying apparatus 60 that delivers bottles
to filler apparatus 50. Id. at 4:60˗5:1; 5:23˗24; Fig. 3. Filler apparatus 50
conveys the bottles in a two by six matrix (twelve bottles total) through the
various operations of filler 50. Id. at 7:35˗49; Figs. 3, 4, 11˗20. When the
bottles are conveyed to main product filler apparatus 160, a control system
controls the volume of low-acid product dispensed into each of the twelve
bottles by controlling the duration of time that a plurality of valves (194A,
194B) are open. Id. at 13:46–56; Fig. 13.

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The main product filler apparatus of Figure 22 is shown below:

Figure 22 is a side view of the main product filler apparatus.
The valve mechanism includes a valve stem attached to an actuator.
Id. at 13:57–63. The actuator moves the valve stem in an upward and
downward direction to open and close the valve. Id. at 13:65–14:16.
Notably, the valve mechanism includes a “sterile region” that continuously
sterilizes the valve stem as it reciprocates into and out of the sterile region
where the food product exits the valve and flows into the bottles. Id. at
14:21–58. According to the specification, sterilizing the valve stem prevents
contaminants from being carried into the sterile filling region. Id. at 14:58–
63. The valve mechanism dispenses the low-acid product into the bottles at
a rate of more than 350 bottles per minute. Id. at 15:31–61.

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D. Representative Claim
Claims 1, 16, and 26 are the independent claims challenged in the
petition. Claim 1 is representative and recites:
1. Apparatus for aseptically filling a series of bottles
comprising:
a valve for controlling a flow of low-acid food product at
a rate sufficient to dispense the food product at a rate of more
than 350 bottle per minute in a single production line;
a first sterile region surrounding a region where the
product exits the valve;
a continuously sterilized second sterile region positioned
proximate said first sterile region whereby said second sterile
region is continuously sterilized during operation;
a valve activation mechanism for controlling the opening
or closing of the valve by extending a portion of the valve from
the continuously sterilized second sterile region into the first
sterile region and by retracting the portion of the valve from the
first sterile region back into the continuously sterilized second
sterile region.
Claim 2 depends from independent claim 1, claims 17 and 18 depend
from independent claim 16, and claim 27 depends from independent claim
26.

III. ANALYSIS
A. Obviousness over Ondrus, Hayashi
8
, Bev Tech, Takei, and David
Petitioner contends that claims 1, 2, 16–18, 26, and 27 are
unpatentable under 35 U.S.C. § 103(a) over Ondrus, Hayashi, Bev Tech,
Takei, and David. Pet. 21–35.

8
Patent Owner’s contention that Hayashi lacks an affidavit attesting to the
accuracy of the translation has been overcome by submittal of such affidavit.
See Prelim. Resp. 4; Paper 10; Ex. 1014.
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Independent claim 1 is directed to an apparatus for aseptically filling a
series of bottles, and that apparatus includes a valve that controls flow of
food product at a rate sufficient to dispense the food product at a specified
rate. Similarly, independent claim 26 is directed to an apparatus for
aseptically filling a series of bottles, and that apparatus includes a valve
controls the flow of food product into a bottle. Also similarly, independent
claim 16 is directed to a method of aseptically filling a series of bottles that
includes the step of controlling the flow of food product using a valve, and
dispensing that food product at a specified rate. The valve of the
independent claims is a valve for filling bottles.
Regarding independent claims 1, 16, and 26, Petitioner proposes to
“combine the valve described in Ondrus with the bottle-filling system
described in Hayashi.”
9
Pet. 21. Specifically, Petitioner proposes to “use
the Ondrus valve as a filling valve in Hayashi.” Id. at 22.
This ground of unpatentability is deficient in at least three respects.
First, Petitioner has not established adequately that Ondrus discloses a valve
as claimed. Second, Petition has not articulated an adequate rationale for
combining the references. Third, Petitioner has not explained adequately
how Hayashi would have led a person of ordinary skill in the art to modify
Ondrus’s valve to reach the claimed subject matter.
1. Ondrus’s Valve
Ondrus discloses a valve for controlling the flow of food product
through a piping system in a food processing plant. Ex. 1006, 1:4–14.
Petitioner does not identify, nor do we discern, any disclosure that Ondrus’s

9
Bev Tech, Takei, and David are utilized for modifications relating to the
dependent claims.
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valve may be used in the filler portion of a food processing plant. Petitioner
acknowledges that Ondrus’s valve is a routing valve, but contends that
David confirms that routing valves such as Ondrus’s were used in filling
applications. Pet. 21˗22 (citing the Declartion of Dr. Heldman, Ex 1004 ¶
80 (the “Heldman Declaration”) and Ex. 1005 (David), 26).
The portion of the Heldman Declaration cited by Petitioner actually
applies to the ground of unpatentability based upon Ondrus and ZFL, not the
ground at hand. See Pet. 21–22 (citing Ex. 1004 ¶ 80); see also Ex. 1004 ¶¶
55–61 (Ondrus and Hayashi), 74–82 (Ondrus and ZFL). The portion of the
Heldman Declaration dealing with the ground of unpatentability based upon
Ondrus and Hayashi does not cite to this portion of David (Ex. 1005). See
Ex. 1004 ¶¶ 55–61. The consequence is that the Petition is not supported by
the Heldman Declaration with regard to the contention that Ondrus’s routing
valve may be used as a filling valve.
Further, Petitioner’s contention that David discloses that valves such
as Ondrus’s routing valve were used in filling applications is not supported
by the reference. David does not disclose that routing valves are used in
filling applications; rather, David discloses that routing valves “were used to
direct the product to a filler.” Ex. 1005, 26; contra Pet. 21–22. That is,
routing valves, such as Ondrus’s, route product to the filler.
Petitioner attempts to explain that Ondrus’s routing valve may be used
as a filling valve in Hayashi’s system because Hayashi discloses that the
“filling system can be freely selected.” See Pet. 21 (citing Ex. 1007, 9).
Hayashi describes the Krones aseptic filling system. Ex. 1007; Pet. 18.
Hayashi discloses that an advantage of the Krones system is that the filling
system may be freely selected from various filling methods (e.g., fixed
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quantity method or weight method). Ex. 1007, 9. The disclosure that
various filling methods are compatible with the Krones system does not
explain adequately why Ondrus’s routing valve may be used as a filler valve.
Petitioner also attempts to explain that Ondrus’s routing valve may be
used as a filling valve in Hayashi’s system because Ondrus’s valve has no
limitations that preclude its use in Hayashi. Id. at 21 (citing Ex. 1004 ¶¶
58˗59). The cited portion of the Heldman Declaration simply repeats the
assertion in the Petition. Neither the Petition nor the cited portion of the
Heldman Declaration persuasively explains how Ondrus’s routing valve can
be used as a filler valve.
Accordingly, Petitioner has not explained adequately how a routing
valve that directs product to a filler, such as Ondrus’s, corresponds to a valve
that controls the flow of product to dispense that product to fill bottles as
claimed.
10

2. Rationale
Petitioner reasons that a person of ordinary skill in the art would have
incorporated the Ondrus valve into Hayashi’s bottle-filling system because
Ondrus’s vavle is appropriate for such use. See Pet. 21˗22. However, as
explained above, Petitioner has not established adequately that Ondrus’s
valve is appriate for such use. Consequently, Petitioner has failed to
articulate reasoning with some rational underpinning to support the legal
conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).

10
Our analysis here ignores the claimed dispensing rate, which is analyzed
in the next section.
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3. Modification in View of Hayashi
The independent claims are not directed to a valve. Rather, the
independent claims are directed to an apparatus (claims 1 and 26) or method
(claim 16) for aseptically filling a series of bottles at a specified rate (more
than 350 bottles per minute). For example, as explained above, the
Specification describes that filler apparatus 50 conveys bottles in groups of
twelve to the filling valves for dispensing of the food product into the
bottles. As stated above, Petitioner’s ground of unpatentability relies upon
Hayashi as disclosing a bottle-filling system, that with the addition of
Ondrus’s filling valve, fills bottles at the specified rate. Pet. 21˗28.
The Hayashi reference should be considered in context. Hayashi is
not a patent; rather, Hayashi is an article published in a 1998 issue of
Beverage Japan authored by Mitsuo Hayashi that describes an asepectic
filling system manufactured by Krones. Pet. 18; Ex. 1007; cf. Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (Prior
art patents are presumed enabled). Further, Hayashi explicitly discloses that
the article provides an “outline” of the Krones system. Ex. 1007, 1–2.
Consequently, we agree with Patent Owner’s characterization that Hayashi
is a high-level overview that does not provide the details of the filling
operation. Prelim. Resp. 10–11.
Petitioner identifies the capability of the Krones system disclosed in
Hayashi. Pet. 18–19, 21–23; Ex. 1007, 1, 2, 5, 9; Ex. 1004 ¶¶ 45, 49.
Specifically, Petitioner identifies that the Krones system is capable of
sterilizing and filling bottles at a rate of 200-500 bottles per minute.
11

11
Calculated from the disclosed rate of 12,000 to 30,000 bottles per hour
(BPH).
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However, this disclosure regarding capability does address the structure that
provides that capability.
Regarding the structure of Hayashi’s apparatus, Petitioner states that:
The bottles are filled in an “aseptic filling chamber” using a
“star wheel” where the bottles are handled by the neck. Id. at 5.
An aseptic channel covers the filling valve. Id. at 6.
Pet. 19.
12

In sum, Petitioner identifies that the Krones system includes: an
aseptic chamber, a star wheel that handles bottles by the neck, and a fill
valve covered by an aseptic channel. These disclosures give little or no
detail regarding the structure that provides the bottle throughput for the filler
apparatus. Petitioner has not explained adequately how a person of ordinary
skill in the art, knowing these teachings from Hayashi, could have modified
Ondrus’s routing valve to create an apparatus that aseptically fills a series of
bottles with food product at the specified rate as required by the independent
claims. See 37 C.F.R. § 42.104(b)(4)–(b)(5).
4. Conclusion
Petitioner has not explained adequately how independent claims 1, 16,
and 26 are unpatentable. Accordingly, we determine that Petitioner has not
demonstrated a reasonable likelihood of prevailing in establishing that
claims 1, 2, 16–18, 26, and 27 are unpatentable under 35 U.S.C. § 103(a)
over Ondrus, Hayashi, Bev Tech, Takei, and David.

12
Petitioner’s contention that Hayashi discloses that bottles pass through a
tunnel in which aseptic air is flowing and are sent to the filler (Pet. 22 (citing
Ex. 1007, 5)) sheds no light on the structure of filler.
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B. Obviousness over Ondrus, ZFL, Bev Tech, Takei, and David
Our analysis of this ground of unpatentability parallels that of the
prior ground in many respects.
Petitioner contends that claims 1, 2, 16–18, 26, and 27 are
unpatentable under 35 U.S.C. § 103(a) over Ondrus, ZFL, Bev Tech, Takei,
and David. Pet. 35–45. Specifically, regarding independent claims 1, 16,
and 26, Petitioner proposes to modify ZFL’s apparatus by incorporating
Ondrus’s valve.
13
See Pet. 37–40, 42–45.
Regarding Ondrus’s valve, Petitioner repeats the assertion that David
discloses that valves such as Ondrus’s routing valve were used in filling
applications. Pet. 36–37. As explained above, such is not the case.
Petitioner has not explained adequately how a routing valve that directs
product to a filler, such as Ondrus’s, corresponds to a valve that controls the
flow of product to dispense that product to fill bottles as claimed. For this
reason, Petitioner also fails to articulate reasoning with some rational
underpinning to support the legal conclusion of obviousness.
In addition, for the reasons that follow, Petitioner has not established
adequately that modification of Ondrus’s valve to be capable of filling at the
claimed rate would have been obvious in view of ZFL.
Petitioner contends that ZFL discloses a filling rate of 100 bottles per
minute and teaches modifications to reach 200 bottles per minute. Pet. 36;
Ex. 1004 ¶ 76. Petitioner contends that it would have been obvious to
increase the number of production lines to create an output of more than 350
bottles per minute. Pet. 38˗39.

13
Bev Tech, Takei, and David are utilized for modifications relating to
dependent claims.
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Petitioner mischaracterizes the reference. The cited portion of ZFL
discloses output of 100 bottles per minute and states that a dual line design
for output of 200 bottles per minute is “in development.” Ex. 1008, 4. A
disclosure that a rate of 200 bottles per minute is in development is a
disclosure that such rate did not exist at that time. Contra. Pet. 36–39.
Further, the ZFL reference should be considered in context. ZFL is
not a patent; rather, it is non-patent literature. We agree with Patent Owner
that ZFL is promotional literature that omits the requisite technical details
that would enable a person of ordinary skill in the art to replicate the ZFL
apparatus. See Prelim. Resp. 14. This contention is supported by a
declaration from the author of the ZFL reference, Dr. Buchner. Id.; Ex.
2027. Dr. Buchner states that in the ZFL article, he took care not to “publish
sufficient knowledge and details which could enable a competitor to
successfully build a machine . . .” Ex. 2027 at ¶ 18.
Beyond the shortcomings of the reference itself, Petitioner has not
adequately explained and cited to the supporting portions of the reference.
In particular, Petitioner identifies capabilities of the ZFL system such as
filling bottles under aseptic conditions. See Pet. 19, 37˗38 (citing Ex. 1008,
1˗4). Petitioner also identifies that ZFL’s bottle-filling system includes
flowmeters. Petitioner has not explained adequately how a person of
ordinary skill in the art, knowing these teachings from ZFL, could have
modified Ondrus’s routing valve to create an apparatus that aseptically fills
as series of bottles with food product at the specified rate as required by the
independent claims. See 37 C.F.R. § 42.104(b)(4)–(b)(5).
Petitioner has not explained adequately how independent claims 1, 16,
and 26 are unpatentable. Accordingly, we determine that Petitioner has not
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demonstrated a reasonable likelihood of prevailing in establishing that
claims 1, 2, 16–18, 26, and 27 are unpatentable under 35 U.S.C. § 103(a)
over Ondrus, ZFL, Bev Tech, Takei, and David.

IV. OTHER MATTERS
A. Pro Hac Vice Motion
Petitioner’s unopposed motion for pro hac vice admission of
Mr. Tyler M. Akagi is approved. See Paper 12 (Motion); Ex. 1015
(Declaration of Mr. Akagi).

B. 35 U.S.C. § 315(b)
Because we determine that the information presented in the Petition
does not demonstrate a reasonable likelihood that Petitioner would prevail
with respect to at least one of the challenged claims, we do not address
Patent Owner’s assertions that the Petition is time-barred under 35 U.S.C.
§ 315(b) based on privity.

V. ORDER
Accordingly, it is
ORDERED that the petition is denied;
FURTHER ORDERED that no inter partes review is instituted;
FURTHER ORDERED that Petitioner’s unopposed motion for pro
hac vice admission of Tyler M. Akagi is granted; Mr. Akagi is authorized to
represent Petitioner only as back-up counsel in this proceeding;
FURTHER ORDERED that Petitioner is to continue to have a
registered practitioner represent it as lead counsel for this proceeding;
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FURTHER ORDERED that Mr. Akagi is to comply with the Office
Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
set forth in Part 42 of Title 37, Code of Federal Regulations; and
FURTHER ORDERED that Mr. Akagi is to be subject to the Office’s
disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO Rules
of Professional Conduct set forth in 37 C.F.R. § 11.101 et. seq.

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PETITIONER:

Thomas Jenkins
Virginia Carron
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
tom.jenkins@finnegan.com
virginia.carron@finnegan.com

PATENT OWNER:

Greg Gardella
Scott McKeown
Ruby Natnithithadha
OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, L.L.P.
CPDocketGardella@oblon.com
CPdocketMcKeown@oblon.com
CPdocketRJN@oblon.com