PTAB

IPR2015-00249

Nestle USA Inc v. Steuben Foods Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Apparatus and Method for Providing Container Filling in an Aseptic Processing Apparatus
  • Brief Description: The ’468 patent discloses methods and systems for the aseptic filling of containers with food products. The invention focuses on a filling valve assembly that includes a sealed actuator designed to remain entirely within a sterile tunnel during operation, thereby preventing contaminants from entering the sterile environment.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, and 7 are anticipated by or, alternatively, obvious 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 every limitation of independent claim 1. Takei describes an aseptic filling apparatus for fluids that controls product flow using a valve. The entire filling valve, including a sealed actuator, is positioned within an “aseptic chamber b,” which is maintained in an aseptic condition at all times. Petitioner asserted that this chamber constitutes the claimed "sterile tunnel" and surrounds the region where the product exits the valve. The actuator in Takei, comprising an "operating means 18" (e.g., fluid cylinder) and "operating rod 13," is sealed by a "covering member 19" and is located entirely within the aseptic chamber. For dependent claims, Petitioner argued Takei discloses a pressurized fluid reservoir (claim 2) and a control system to operate the valve (claim 7).
    • Motivation to Combine (for §103 alternative): If Takei's "aseptic chamber" were not considered a "sterile tunnel," a POSITA would have been motivated to deploy Takei's sterile valve assembly within a conventional sterile tunnel to achieve the known benefits of that configuration.

Ground 2: Claims 1-3, 7, 9, and 20-23 are obvious over Biewendt, Takei, and other art

  • Prior Art Relied Upon: Biewendt (a 1996 report on an aseptic filling plant), Takei (Japanese Patent App. 1992), Bev Tech (a 1997 conference proceeding), David (a 1996 book on aseptic processing), ZFL (a 1989 magazine article), Chambers (a 1993 book), Campden (a 1983 seminar proceeding), and Rose (a 1986 book).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Biewendt, which describes a high-speed Bosch aseptic bottling plant, discloses most limitations of the independent claims, including a method of aseptically bottling UHT milk within a sterile housing or tunnel using filling valves. However, Biewendt is silent on the specific design and placement of the valve actuator. Petitioner argued Takei supplies the missing elements by teaching a sealed valve actuator that is positioned within the sterile region to control the valve's opening and closing. The combination of Biewendt's system with Takei's valve assembly would render claims 1 and 20 obvious. Additional references were cited for dependent claims, such as David and Bev Tech for a pressurized product tank (claim 2) and a flow meter measuring device (claim 3), and ZFL for achieving a 6-log reduction in spore organisms (claims 9 and 21).
    • Motivation to Combine: A POSITA would combine Biewendt and Takei because maintaining sterility is of the utmost importance in aseptic packaging. Biewendt's system requires a valve, and Takei’s valve design, with its sealed actuator located inside the sterile zone, directly addresses the critical problem of preventing contaminants from being introduced by external machine components. A POSITA would have recognized that incorporating Takei's valve into Biewendt's system would improve sterility with no change to the operating principles of either system.
    • Expectation of Success: Success would be expected because the combination simply integrates known elements—a sterile filling line (Biewendt) and a hygienically designed valve (Takei)—for their intended purposes, yielding predictable results in maintaining product sterility.

Ground 3: Claims 1-3, 7, 9, and 20-23 are obvious over ZFL, Takei, and other art

  • Prior Art Relied Upon: ZFL (a 1989 magazine article), Takei (Japanese Patent App. 1992), Bev Tech (a 1997 conference proceeding), Chambers (a 1993 book), and Campden (a 1983 seminar proceeding).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground is similar to Ground 2 but uses ZFL as the primary reference. Petitioner argued ZFL, which describes the same Bosch aseptic filling technology as Biewendt, discloses a high-speed aseptic bottling method in a sterile tunnel. While ZFL inherently requires a valve to control product flow, it does not detail its design. Petitioner asserted it would have been obvious to provide ZFL’s system with the sealed valve and actuator from Takei, which is explicitly designed for aseptic use and is located within a sterile chamber. The combination of ZFL and Takei meets the limitations of the independent claims. The same secondary references as in the other grounds were cited to teach the limitations of the dependent claims.
    • Motivation to Combine: The motivation is identical to that in Ground 2. A POSITA seeking to ensure maximum sterility in ZFL’s fully enclosed system would have been motivated to incorporate Takei’s valve design to minimize the risk of contamination from the actuator.

4. Arguments Regarding Discretionary Denial

  • Petitioner argued that institution was warranted despite a copending IPR (IPR2014-00054) and an inter partes reexamination.
  • The petition asserted that Ground 1, based on Takei as a primary reference, was not presented or instituted in the copending IPR, warranting separate consideration.
  • It further argued that Ground 2 was based on the Biewendt reference, which was newly asserted and had not been previously considered by the Patent Office or the Board in any proceeding involving the ’468 patent.
  • Ground 3 was presented as a contingent ground to be instituted in the event the copending IPR was terminated for procedural reasons, ensuring the substantive challenge would still be heard.

5. Relief Requested

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