Nestle USA, Inc. v. Steuben Foods Inc.

1. Case Identification

• Case #: Not yet assigned
• Patent #: 6,481,468
• Filed: November 7, 2014
• Petitioner(s): Nestlé USA, Inc.
• Patent Owner(s): Steuben Foods, Inc.
• Challenged Claims: 1-3, 7, 9, and 20-23

2. Patent Overview

• Title: Apparatus and Method for Providing Container Filling in an Aseptic Processing Apparatus
• Brief Description: The ’468 patent discloses methods and apparatuses for aseptic food packaging. The invention focuses on a filling valve with a sealed actuator that is disposed within a sterile tunnel to prevent contaminants from entering the aseptic product during the filling process.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness of Claims 1, 2, and 7 over Takei

• Prior Art Relied Upon: Takei (Japanese Patent App. Laid-Open Publ. No. 04-154501 (1992)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Takei discloses all limitations of independent claim 1. Takei teaches an aseptic filling apparatus with a valve that operates inside an "aseptic chamber b," which Petitioner asserted is a "sterile tunnel." The valve actuator in Takei, comprising an "operating means 18" (e.g., a fluid cylinder) and an "operating rod 13" sealed by a covering member, is a "sealed actuator" entirely surrounded by the sterile region. For dependent claim 2, Takei discloses a "fluid reservoir" that is "pressure fed," meeting the limitation of a pressurized tank. For dependent claim 7, Takei's system uses an electrical signal from a measurement means to control the valve actuator, which Petitioner contended inherently requires a "control system" and a "control conduit."
  • Motivation to Combine (for §103 alternative): In the alternative, Petitioner argued it would have been obvious to consider Takei's "aseptic chamber" a "sterile tunnel." Furthermore, providing a control conduit to transmit the electrical signal for valve operation was one of a limited number of predictable design choices for a person of ordinary skill in the art (POSITA).

Ground 2: Obviousness of Claims 1-3, 7, 9, and 20-23 over a Combination of References

• Prior Art Relied Upon: Biewendt (a 1996 report on aseptic filling), Takei (Japanese Patent App. Laid-Open Publ. No. 04-154501 (1992)), Bev Tech (a 1997 conference proceeding), David (a 1996 book on aseptic processing), ZFL (a 1989 magazine article), Chambers (a 1993 book on aseptic processing), Campden (a 1983 seminar proceeding), and Rose (a 1986 book on good manufacturing practice).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted the primary combination of Biewendt and Takei renders the independent claims obvious. Biewendt discloses a complete aseptic bottling system that includes a sterile tunnel, aseptic filling of UHT milk, and control of product flow using a filling valve. However, Biewendt is silent on the specific design of the valve actuator. Takei remedies this deficiency by teaching a sealed valve actuator positioned within a sterile region. The remaining references were cited to show that the features of the dependent claims were well-known in the art. For example, David and Bev Tech teach using pressurized tanks (claim 2) and flow meters positioned between the tank and valve (claim 3). ZFL teaches achieving a 6-log reduction in spore organisms (claims 9 and 21), while Chambers, Campden, and Rose confirm that UHT processing of milk as taught by Biewendt inherently achieves the 12-log reduction required by claim 22. Biewendt itself discloses filling rates of 100 containers per minute (claim 23).
  • Motivation to Combine: A POSITA would combine Biewendt and Takei to improve the sterility of the Biewendt system. Maintaining sterility is critical, and a POSITA would recognize the benefit of using Takei's readily sterilizable valve with its sealed actuator fully contained within the sterile tunnel to prevent the introduction of contaminants. The combination involved applying a known technique (Takei's valve) to a known system (Biewendt's filler) to yield predictable results.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because combining the references would not change the principle of operation of either system and would address the known need for maintaining sterility in aseptic packaging.

Ground 3: Obviousness of Claims 1-3, 7, 9, and 20-23 over an Alternative Combination

• Prior Art Relied Upon: ZFL (a 1989 magazine article), Takei (Japanese Patent App. Laid-Open Publ. No. 04-154501 (1992)), Bev Tech (a 1997 conference proceeding), Chambers (a 1993 book on aseptic processing), and Campden (a 1983 seminar proceeding).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground is substantially similar to Ground 2 but uses ZFL as the primary reference instead of Biewendt. Petitioner argued that ZFL and Biewendt disclose nearly identical Bosch aseptic bottling systems. ZFL teaches a method of aseptically bottling UHT milk in a sterile tunnel and inherently requires a valve to control flow. As in Ground 2, Takei was cited to provide the missing element of a sealed actuator disposed within the sterile region. The other references (Bev Tech, Chambers, Campden) were cited for the same reasons as in Ground 2 to teach the additional limitations of the dependent claims.
  • Motivation to Combine: The motivation to combine ZFL and Takei mirrored the motivation for combining Biewendt and Takei: to enhance the sterility of the overall system by incorporating a valve designed to prevent contamination, a key concern in the art.
  • Key Aspects: This ground was presented as an alternative that the Board had already found likely to succeed in a related proceeding (IPR2014-00054).

4. Key Claim Construction Positions

• Petitioner adopted the claim constructions used by the Board in the related IPR proceeding (IPR2014-00054).
• The term "aseptic" was construed to mean "free of pathogenic microorganisms." Petitioner stated that this construction was consistent with its unpatentability arguments.
• Petitioner noted that other terms should be given their broadest reasonable interpretation in light of the specification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that institution of this inter partes review (IPR) was warranted despite a copending IPR (IPR2014-00054) and an inter partes reexamination.
• The petition asserted that Ground 1, based on Takei as an anticipatory reference, presented a new argument not previously considered by the Board.
• It further argued that Ground 2 was based on the newly asserted Biewendt reference, which had not been considered by the Patent Office or the Board.
• Finally, Petitioner presented Ground 3 as a contingency, requesting institution on this ground in the event that the copending IPR2014-00054 was terminated due to a dispute over the real party in interest.

6. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-3, 7, 9, and 20-23 of Patent 6,481,468 as unpatentable.