PTAB

IPR2013-00262

EID Parry India Ltd v. Lycored Ltd

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Stable Lycopene Concentrates
  • Brief Description: The ’183 patent relates to stable lycopene concentrates suitable for use as food coloring and in nutraceutical, pharmaceutical, and cosmetic formulations. The challenged claims are directed to a process for preparing a crystalline lycopene composition from a lycopene-containing oleoresin.

3. Grounds for Unpatentability

Ground 1: Claims 14, 15, and 25 are anticipated by the ’459 publication under 35 U.S.C. § 102.

  • Prior Art Relied Upon: ’459 publication (Japanese Publication No. 56-008459).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the ’459 publication taught every limitation of the challenged claims. The ’459 publication discloses a process for removing impurities from carotenoid oleoresins to produce a dense-colored product. Petitioner asserted that although the ’459 publication does not explicitly name lycopene, it identifies tomato oleoresin as a potential raw material. A person of ordinary skill in the art (POSITA) would have known that lycopene is the primary carotenoid in tomatoes, making a tomato oleoresin inherently a "lycopene-containing oleoresin." The ’459 publication describes mixing the oleoresin with a solvent (e.g., hexane, ethyl acetate) to dissolve the lipid phase (phospholipids) while separating out the carotenoid color as "fine particles." Petitioner contended this process meets the claim limitation of dissolving the lipid phase without substantially dissolving the lycopene crystals, especially as ’459 notes a "good yield," implying the pigment was not dissolved and lost. This process results in the claimed "crystalline lycopene composition."

Ground 2: Claims 14, 15, and 25 are obvious over the ’459 publication in view of Nir under 35 U.S.C. § 103.

  • Prior Art Relied Upon: ’459 publication (Japanese Publication No. 56-008459) and Nir (Z. Nir et al., Lycopene From Tomatoes: A New Commercial Natural Carotenoid, 6 Int'l Food Ingredients, 45-51 (1993)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that, to the extent the ’459 publication does not explicitly disclose using its process for lycopene, Nir supplied the missing context. The ’459 publication teaches a general method for purifying carotenoid oleoresins by removing lipids with a solvent. Nir explicitly teaches that lycopene is the primary pigment in tomatoes, is available as an oleoresin, and that its crystalline form is responsible for its bright red color. Nir also teaches that the coloring ability of lycopene depends on its concentration. Combining these references, a POSITA would understand that the general purification process in ’459 could be applied to the lycopene oleoresin described by Nir.
    • Motivation to Combine: A POSITA would have been motivated to combine the teachings for two primary reasons. First, the ’459 publication’s goal was to remove impurities that cause undesirable odors and affect color quality. A POSITA would apply this known purification technique to lycopene oleoresin to achieve the same benefits. Second, Nir teaches that lycopene concentration affects its coloring ability. A POSITA would be motivated to remove non-lycopene lipids from the oleoresin—as taught by ’459—to increase the relative concentration of lycopene and thereby enhance its performance as a coloring agent, a predictable outcome.
    • Expectation of Success: Petitioner asserted a POSITA would have a reasonable expectation of success. The combination involved applying a standard solvent extraction technique, taught by ’459 for carotenoids generally, to a specific, well-known carotenoid (lycopene) described by Nir. The result—a purer, more concentrated lycopene product with improved color—was the predictable outcome of removing lipids and impurities. The ’459 publication itself lists several suitable solvents, including hexane and ethyl acetate (recited in claim 25), providing a clear path for a POSITA to follow.

4. Key Claim Construction Positions

  • "does not substantially dissolve lycopene crystals": Petitioner contended this term was indefinite. For the purposes of the inter partes review (IPR), Petitioner proposed a construction of "does not dissolve over 40% of the lycopene crystals." This construction was based on an interpretation of the ’183 patent's specification, which Petitioner argued suggested that dissolving over 35% of the crystalline lycopene could occur during the extraction process.
  • "a major part of the oleoresin lipids": Petitioner argued this term was also indefinite as the specification provided no guidance on what constitutes a "major" versus a "minor" part. For the IPR, Petitioner proposed the broadest reasonable interpretation of "greater than 50% of the oleoresin lipids."

5. Relief Requested

  • Petitioner requested the institution of an IPR and the cancellation of claims 14, 15, and 25 of Patent 5,965,183 as unpatentable.