PTAB

IPR2013-00263

EID Parry India Ltd v. LycoRed Ltd

Log In

1. Case Identification

2. Patent Overview

  • Title: Process for the Manufacture of Tomato Products
  • Brief Description: The ’311 patent discloses a process for the industrial processing of tomatoes. The claimed method involves pretreating tomatoes by crushing and heating, separating the mixture into a serum and a lycopene-rich pulp fraction, and then subjecting the pulp to solvent extraction to produce a lycopene oleoresin while recovering the solvents.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 9, 11, and 14 are obvious over the ’027 application, the ’012 patent, and the ’805 patent.

  • Prior Art Relied Upon: ’027 application (European Patent Application No. 0,608,027), ’012 patent (Patent 3,404,012), and ’805 patent (Patent 2,863,805).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every element of the challenged claims. The ’027 application, which shares inventors with the challenged patent, was asserted to teach the core steps of crushing ("breaking") tomatoes and separating them via centrifuge into a serum and a pulp fraction. Petitioner’s expert contended that the process described in the ’027 application would inherently result in a pulp containing over 500 ppm of lycopene, thus meeting a key limitation of claim 1. To supply the claimed heat treatment step, which is absent from the ’027 application, Petitioner pointed to the ’012 patent. The ’012 patent explicitly teaches a "hot break" step (heating to 170-205°F) after crushing to destroy enzymes before separation. Finally, Petitioner argued the ’805 patent teaches the claimed solvent extraction steps (d-f), as it describes extracting a tomato cake with a solvent (hexane) to produce a tomato oleoresin, separating the spent solids, and recovering the solvent for reuse.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these known food processing techniques for predictable benefits. A POSITA would add the heating step from the ’012 patent to the separation process of the ’027 application to prevent enzymatic degradation and soften tomato tissue, making separation more efficient. A POSITA would then apply the solvent extraction method of the ’805 patent to the resulting pulp fraction because removing the aqueous serum first is a known strategy to improve the efficiency and reduce the cost of solvent extraction.
    • Expectation of Success: Each step was a well-known, conventional technique in food processing. A POSITA would have had a high expectation of success in combining them, as each element would perform its known function to yield a predictable result—an extracted lycopene oleoresin.

Ground 2: Claims 1, 2, 9, 11, and 14 are obvious over the ’770 patent and the ’805 patent in view of the Nir reference.

  • Prior Art Relied Upon: ’770 patent (Patent 3,172,770), ’805 patent (Patent 2,863,805), and Nir (Z. Nir et al., Lycopene From Tomatoes: A New Commercial Natural Carotenoid, 1993).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the ’770 patent teaches the foundational process of crushing, heating, and centrifugally separating tomatoes into a "first fraction" (pulp containing "substantially all of the insolubles") and a "second fraction" (serum). A POSITA would have understood that lycopene, being insoluble in water, would be concentrated in the pulp fraction. The ’805 patent, as in Ground 1, supplied the well-known method for solvent extracting a tomato-based product to obtain an oleoresin. The Nir reference, an article co-authored by inventors of the ’311 patent, was presented as providing the motivation to achieve the final claimed process. Nir describes the economic imperative of using high-lycopene tomato strains for extraction and discloses the goal of producing three distinct products: tomato oleoresin, soluble tomato solids (from serum), and insoluble tomato solids (spent pulp).
    • Motivation to Combine: The primary motivation argued was to achieve the commercially desirable three-product output described in Nir. A POSITA seeking this outcome would naturally look to combine known processes. The ’770 patent provided an efficient method for the initial separation into pulp and serum. The ’805 patent provided the standard method for extracting oleoresin from the pulp. Furthermore, Nir’s teaching to use high-lycopene tomatoes would motivate a POSITA to select raw materials that would inherently yield a pulp with a lycopene concentration greater than 500 ppm, thus meeting the limitation of claim 1.
    • Expectation of Success: The combination represents the logical assembly of conventional, widely used operations to achieve the specific, articulated goal in the Nir reference. A POSITA would expect this combination to work predictably to separate the tomato components and extract the target oleoresin. The dependent claims were argued to be obvious for the same reasons as in Ground 1, as they recite inherent properties (claim 2 concentration, claim 9 solvent parameters) or routine optimizations (claim 11 multi-stage extraction, claim 14 filtering) taught by the prior art, particularly the ’805 patent.

4. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1, 2, 9, 11, and 14 of the ’311 patent as unpatentable.