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

Patent Trial and Appeal Board

Jul 13, 2015

09376992 (P.T.A.B. Jul. 13, 2015)

Trials@uspto.gov Paper 17
Tel: 571-272-7822 Entered: July 13, 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 Petitioner’s Request for Rehearing
37 C.F.R. § 42.71(d)
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I. OVERVIEW
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 (the “challenged
claims”) 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.”). The Board denied institution of an inter partes review. Paper 14
(“Dec.”). Petitioner filed a Request for Rehearing asking that the Board reconsider
its decision not to institute with regard to one of the two asserted grounds of
unpatentability. Paper 16 (“Req. Reh’g”). Specifically, Petitioner asks that the
Board reconsider our Decision and institute on obviousness over Ondrus
2
,
Hayashi
3
, Bev Tech
4
, Takei
5
, and David
6
. Id. at 1. For the reasons that follow, this
request is denied.

II. STANDARD
When rehearing a decision on petition, the Board will review the decision
for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may

1
See also Reexamination certificate issued Nov. 25, 2013.
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).
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be determined if a decision is based on an erroneous interpretation of law, if a
factual finding is not supported by substantial evidence, or if the decision
represents an unreasonable judgment in weighing relevant factors. See Arnold
Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party
challenging the decision has the burden of showing a decision should be modified,
and the request for rehearing must specifically identify all matters the party
believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).

III. ANALYSIS
Petitioner’s arguments are predominately based on the assertion that the
Decision misconstrued the challenged claims. We begin our analysis with claim
construction, and then turn to the related arguments.
A. Claim Construction
Independent claim 1 is illustrative and follows:
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.
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Petitioner disagrees with the claim construction in the Decision. Req.
Reh’g. 1–14. According to Petitioner, relying upon an incorrect claim construction
led the Board to incorrectly apply the prior art (Ondrus and Hayashi) to the claims
at issue, and to improperly evaluate Petitioner’s rationale for the ground of
unpatentability. Id.
Specifically, Petitioner contends that the preamble of the independent claims
is entitled to no patentable weight.
7
Id. at 6–7 (citing Digitech Image Techs., LLC
v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Petitioner
contends that the independent claims do not require a routing valve or a filling
valve; rather, the claims require a valve able to control the flow of food product
anywhere in the food processing plant. Id. at 4–13. In short, Petitioner
characterizes the claimed subject matter as directed only to a valve that controls the
flow of food product.
We disagree with Petitioner’s interpretation that the claims are directed only
to a valve. As stated in the Decision, “[t]he 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).” Dec. 10.
For two primary reasons, Petitioner has not persuaded us that our claim
construction was in error. Interpreting claim 1 to require a valve that can control
the flow of food product anywhere in the food processing plant (Req. Reh’g 5) is
inconsistent with the language of claim 1 interpreted in light of the ’591 patent
specification. Claims 1, 16, and 26 recite “a first sterile region surrounding a

7
Of the challenged claims, claims 1, 16, and 26 are independent. We note that
claim 16 is a method rather than an apparatus claim, but is similar to independent
claims 1 and 26 in other respects.
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region where the product exits the valve,” “a continuously sterilized second sterile
region positioned proximate said first sterile region,” and “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.”
8

The ’591 patent specification makes clear that the claimed sterile regions
and valve are located in product dispensing and bottle filler apparatus 50. The
’591 patent discloses inventive methods and systems for providing container
product filling in an aseptic processing apparatus. Ex. 1001, 1:9–13, 2:32–46. To
address the problem of portion 264A of valve stem 256A of filling nozzles 190A,
190B moving through non-sterile region 268 prior to entering sterile region 260
where product is dispensed into containers (see Figs. 23, 24), the ’591 patent adds
second sterile region 270A to ensure that contaminants from non-sterile region 268
are not introduced by valve stem 256A into first sterile region 260 when food
product is dispensed into bottles 12 from filling nozzles 190A, 190B. Id. at 13:8–
14:63; Figs. 23–26.
The Petition did not identify any disclosure in the ’591 patent to indicate that
the claimed valve was part of a product routing apparatus. To the contrary, the
Petition asserted that the “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 bottles per
minute in a single product line” includes “a plurality of valves” because the filling

8
Claim 16 recites method steps of “surrounding a region where the food product
exits the valve with a sterile region,” “providing a continuously sterilized second
sterile region positioned proximate said first sterile region,” and “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.”
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apparatus uses twelve valves, one for each filling nozzle in a twelve-bottle matrix.
Pet. 11. Thus, the Petition took the position that the claimed valve dispensed
product into bottles. See id. To that end, Petitioner argued that the routing valves
of Ondrus could be used in the bottle filling apparatus of Hayashi. Id. at 21–22.
However, as discussed below, the Decision explained that this contention was not
supported by David or the Heldman Declaration. Dec. 8.
Further, the preamble of the independent claims is entitled to patentable
weight. See Bicon, Inc.v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (“it
is not unusual for a court to treat preamble language as limiting”). The preamble
of claim 1 recites an “[a]pparatus for aseptically filling a series of bottles,” and the
body of the claim recites that the valve of that apparatus controls “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.” In doing so, the claim
utilizes both the preamble and the body to define the subject matter as an apparatus
that includes a valve that is part of a filling method or apparatus that permits filling
of a series of bottles at the specified rate. See Bell Commc'ns Research, Inc. v.
Vitalink Commc'ns Corp., 55 F.3d 615, 620 (Fed.Cir.1995) (giving weight to a
preamble where the subject matter was defined using both the preamble and the
body of the claim). The preambles clarify that the claimed valve is part of a filling
apparatus or method that fills a series of bottles. As explained in our Decision, the
’591 patent describes a conveying apparatus that delivers bottles to a filler
apparatus, and moves those bottles through the various operations of the filler so
that a series of bottles may be filled. See Dec. 4–5.
Having reviewed the entire patent, we determine that the preamble of claim
1 is necessary to give meaning to the claim by making clear that the valve and
other claimed elements are part of a food dispensing apparatus and method that fill
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bottles at the claimed rate, and therefore is limiting. See Catalina Marketing Int’l.,
Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). In light of this,
Petitioner’s reliance on Digitech is misplaced. See Req. Reh’g 6. In Digitech, the
preamble of the claim at issue merely stated the purpose or intended use of the
invention, and in contrast the preamble of independent claim 1 is used to define the
invention. See Digitech, 758 F.3d at 1351. Similarly, Petitioner’s reliance on
Schreiber is misplaced because the limitation at issue in Schreiber was only an
intended use and such is not the case here. See Req. Reh’g 6–7 (analogizing to
Schreiber); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
B. Ondrus’s Valve and Rationale
Petitioner’s assertion that the Board improperly distinguished between a
routing valve and a filling valve is based upon the assertion that the claim
construction in the Decision was in error. Req. Reh’g 4–7. This contention is
unpersuasive because, as detailed above, the claim construction in the Decision
was not in error. Petitioner’s assertion that the claimed valve can be a routing
dispensing valve that directs food product to a dispensing and filling apparatus is
raised for the first time in the Request for Rehearing (Req. Reh’g 5–6) and does
not persuade us that we overlooked or misapprehended anything in reaching our
Decision, particularly in view of Petitioner’s proposed construction of “valve” in
the Petition to mean one of twelve valves that dispense food product into bottles, as
discussed above. See Pet. 12.
Following this, Petitioner contends that Ondrus’s valve could be used as a
filling valve. Req. Reh’g 7. Specifically, Petitioner contends that “[t]here is no
evidence that a valve capable of controlling the flow of food product through a
piping system requires or lacks any features that would disqualify the valve from
operating as a ‘filling’ valve.” Id. at 8. Petitioner adds that the Board
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misinterpreted Dr. Heldman’s testimony about the suitability of Ondrus’s valve in
a filler as limited to ZFL. Req. Reh’g 8 (referring to the Declaration of
Dr. Heldman, Exhibit 1004). For the reasons that follow, these contentions are not
persuasive.
Petitioner’s contention that there is no evidence that Ondrus’s valve is not
capable of use as claimed is to some extent an attempt to improperly shift the
burden of proof. It is Petitioner’s burden, not Patent Owner’s, to explain how the
challenged claim is unpatentable. See 37 C.F.R. § 42.104(b)(4)–(b)(5).
Regarding the Board's alleged misinterpretation of the Heldman Declaration,
as explained in the Decision, the Petition cites to a paragraph of the Heldman
Declaration dealing with the ground of unpatentability based in part on Ondrus and
ZFL in support of the ground of unpatentability based in part on Ondrus and
Hayashi.
9
See Dec. 7–8; Pet. 21–22 (citing the Heldman Declaration, Ex. 1004 ¶
80); see also Ex. 1004 ¶¶ 55–61 (addressing Ondrus and Hayashi), ¶¶ 74–82
(addressing Ondrus and ZFL), ¶ 80 (“The Ondrus valve has no limitations that
would preclude its use in ZFL.”). Further, the portion of the Heldman Declaration
dealing with the ground of unpatentability based in part on Ondrus and ZFL (Ex.
1004 ¶ 80) states that David discloses that valves such as Ondrus’s routing valve
were used in filling applications, while the portion of the Heldman Declaration
addressing the ground based in part on Ondrus and Hayashi (Ex. 1004 ¶ 59)
contains no such statement. Consequently, the Board did not misapprehend;
rather, as correctly stated in the Decision, “[t]he 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 Dec. 8.

9
Petitioner does not contend that the Petition’s citation to paragraph 80 of the
Heldman Declaration (Ex. 1004) was typographical or clerical error.
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Further, the Decision went on to address Petitioner’s contention that David
discloses that valves such as Ondrus’s routing valve were used in filling
applications. See Dec. 8–9. Therefore, to the extent that the Request for
Rehearing argues that this contention in the Petition was overlooked by the
Decision, such is not the case. The Decision explained that David discloses that
routing valves direct product to a filler, and does not disclose that routing valves
may be used in filling applications, i.e., to dispense food product, as the Petition
contends. Id. Nothing in the request for rehearing persuades us the Decision was
in error on that point.
C. Hayashi
Petitioner contends that the claims require no structure other than the valve
to satisfy the bottles per minute limitation of the challenged claims. Req. Reh’g.
12–13. Based on this, Petition contends that Hayashi need not provide the details
of structure that provides the bottle throughput. Id.
As explained above, the claims require an apparatus that includes a valve
and permits filling a series of bottles at the specified rate. Although the filling of a
series of bottles at a specified rate is a functional limitation, functional language
cannot simply be ignored. See e.g., In re Echerd, 471 F.2d 632, 635 (CCPA 1973).
The apparatus proposed by Petitioner must be capable of performing the claimed
function. As stated in the Decision, it is Petitioner’s burden to explain how the
disclosures of Ondrus and Hayashi would have rendered obvious the claimed
subject matter. Dec. 11 (citing 37 C.F.R. § 42.104(b)4)-(b)(5)).
In the Petition, Petitioner proposed to “combine the valve described in
Ondrus with the bottle-filling system described in Hayashi.” See Pet. 21; Dec. 7
(quoting this portion of the Petition). Now in the Request for Rehearing, Petitioner
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changes course to contend that Hayashi need not provide the details of any
structure because Ondrus’s valve alone meets the challenged claims.
10

Ondrus discloses a valve for controlling the flow of food product through a
piping system in a food processing plant. See Ex. 1006, 1:4–14; Dec. 7. Petitioner
has not explained adequately why a skilled artisan would have considered using
the routing valve of Ondrus to dispense food product in the bottle-filling system of
Hayashi to permit filling a series of bottles at the specified rate as claimed. See
Dec. 7–9. The disclosure in David (Ex. 1005, 26), and Heldman Declaration
assertions based thereon (Ex. 1004 ¶ 80), do not explain why it would have been
obvious to use a routing valve to dispense food product into bottles at the claimed
rate. Dec. 9. David discloses only that “[t]hese [routing] valves were used to
direct the product to a filler, aseptic tank, or the drain-supply.” Even if the claimed
valve covered routing valves, as Petitioner now asserts, the Petition did not explain
how addition of such a routing valve to Hayashi would have resulted in the
claimed filling rate, or why a skilled artisan would have been motivated to add
such a routing valve to Hayashi to increase the dispensing rate of Hayashi to meet
the claimed filling rate.
D. Bucher Declaration
Petitioner contends that it was legal error for the Decision to rely upon the
Declaration of Dr. Buchner (Ex. 2027), because that declaration is new testimonial
evidence precluded by 37 U.S.C. § 42.107(c). Req. Reh’g 13. Petitioner adds that
even if the Declaration may be considered, it is inapposite because it does not
discuss Hayashi. Id. at 13–14.

10
“Ondrus satisfies all of the ‘valve’ limitations of the claims, there is no need for
modification.” Req. Reh’g. at 11.
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This contention is unpersuasive because the Decision does not cite to, nor
rely upon the Declaration of Dr. Buchner. See Dec. 10. Instead, the Decision
explains that Hayashi is nonpatent literature that provides a high-level overview of
the Krones system without the details of the filling operation. Id. (citing Prelim.
Resp. 10–11).

IV. CONCLUSION
We have considered the Request for Rehearing, but decline to modify the
Decision.

V. ORDER
For the foregoing reasons, it is
ORDERED that Petitioner’s Request for Rehearing is denied.

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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