PTAB

IPR2013-00263

EID Parry India Ltd v. Lycored Ltd

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1. Case Identification

2. Patent Overview

  • Title: Process for Industrial Processing of Tomatoes
  • Brief Description: The ’311 patent discloses a process for manufacturing tomato products. The process involves pretreating and crushing tomatoes, separating them into serum and pulp fractions, and then subjecting the pulp to solvent extraction to obtain a lycopene-containing oleoresin.

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 claimed process is an obvious combination of two well-known techniques. The initial steps of claim 1—pretreating, crushing, heating, and separating tomatoes into serum and pulp—were taught by the ’027 application and the ’012 patent. Specifically, the ’027 application, which shares inventors with the ’311 patent, disclosed separating crushed tomatoes into serum and pulp fractions, with its examples indicating a pulp containing approximately 1000 ppm of lycopene, satisfying the "at least 500 ppm" limitation of claim 1. While the ’027 application did not explicitly teach a heating step, the ’012 patent taught heating crushed tomatoes in a "hot break" tank to destroy enzymes before separation. The subsequent steps of claim 1—subjecting the pulp to solvent extraction, separating the spent pulp, and recovering the solvents to obtain an oleoresin—were taught by the ’805 patent. The ’805 patent described extracting a tomato cake with hexane to form a tomato oleoresin, separating the solids, and recovering the solvent via distillation. Petitioner contended that dependent claims were also taught, as claim 2’s lycopene range was met by the ’027 application, and claim 9’s solvent parameters were inherently met by the hexane taught in the ’805 patent.
    • Motivation to Combine: A POSITA would combine these known techniques for efficiency. Separating the lycopene-rich pulp from the watery serum, as taught by the ’027 application and ’012 patent, would concentrate the target compound before extraction. It was known that removing water improves the efficiency of solvent extraction. Therefore, applying the standard oleoresin extraction process from the ’805 patent to the concentrated pulp fraction would have been a logical and predictable process improvement.
    • Expectation of Success: A POSITA would have had a high expectation of success because the combination merely united old elements, each performing its known function, to yield a predictable result.

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

  • 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: This ground asserted that the combination was motivated by the desire to create specific end products known in the art. The ’770 patent taught the initial steps of crushing, heating, and centrifugally separating tomato juice into a pulp fraction (containing insolubles) and a serum fraction (containing solubles). The ’805 patent again provided the well-known method for solvent extraction of a tomato product to form an oleoresin. The Nir reference, co-authored by an inventor of the ’311 patent, disclosed a process that resulted in three distinct products: tomato oleoresin, soluble tomato solids, and insoluble tomato solids. Petitioner argued these are the same three products resulting from the process of claim 1 (oleoresin, spent pulp/insoluble solids, and dehydrated serum/soluble solids).
    • Motivation to Combine: The Nir reference provided the explicit motivation. A POSITA seeking to produce the three valuable products described in Nir would logically assemble a process from conventional techniques. The ’770 patent taught an efficient method for the first step: separating soluble solids (serum) from insoluble solids (pulp). To obtain the tomato oleoresin from the lycopene-rich pulp, the POSITA would naturally apply the standard solvent extraction process of the ’805 patent. Nir also taught that for economic viability, it was desirable to use tomato strains rich in lycopene. Using such tomatoes in the ’770 process would inherently result in a pulp fraction with a lycopene concentration well over 500 ppm, thus meeting the limitation of claim 1.
    • Expectation of Success: A POSITA would have expected success because they would be combining two well-understood, conventional food processing operations to obtain the known set of products disclosed by Nir. The outcome would be no more than the predictable result of its constituent parts.

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.