Kroger Co v. Healthy Fiber LLC

1. Case Identification

• Case #: Unassigned
• Patent #: 9,668,488
• Filed: March 23, 2018
• Petitioner(s): The Kroger Co., MGPI Processing, Inc., and MGP Ingredients, Inc.
• Patent Owner(s): Healthy Fiber LLC
• Challenged Claims: 1-4 and 6

2. Patent Overview

• Title: Low-Calorie Food Formulations with Resistant Starch
• Brief Description: The ’488 patent is directed to starch-based food formulations that achieve a reduction in calories while maintaining acceptable mouthfeel, flavor, and texture. The invention uses Type IV resistant starch (RS4) to produce final food products having a nutritive value between 1 to 3.25 calories per gram and a total dietary fiber content from RS4 of 14-60% on a dry weight basis.

3. Grounds for Unpatentability

Ground 1: Anticipation over Yeo - Claims 1-3 and 6 are anticipated under 35 U.S.C. §102(b) by Yeo.

• Prior Art Relied Upon: Yeo (a 2002 dissertation titled High- and Low-Swelling Cross-Linked Wheat Starches; Physical Properties and Potential Uses).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yeo explicitly sought to produce "foods with increased levels of resistant starch and decreased caloric density." Yeo discloses preparing test breads using an RS4 starch made according to the methods of Seib (a reference for making RS4). Petitioner submitted its own nutritional analysis of Yeo's 1/1 recipe, asserting that the resulting food product inherently meets the limitations of the challenged claims. Specifically, the analysis showed the recipe produces a final product with 2.70-3.03 cal/g and a dietary fiber content arising from RS4 of 23.48-34.07%, falling squarely within the ranges of claim 1. Yeo also discloses adding vital wheat gluten (meeting claim 6) and preparing dough for a baked bread product (meeting claims 2 and 3).

Ground 2: Anticipation over Dohl I - Claims 1-3 and 6 are anticipated under 35 U.S.C. §102(e) by Dohl I.

• Prior Art Relied Upon: Dohl I (Application # 2005/0013900).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Dohl I is directed to high-protein, low-carbohydrate bakery products that use resistant starch to replace digestible carbohydrates. Petitioner’s nutritional analysis of Dohl I's Example 28 (a tortilla) showed it inherently possesses the claimed characteristics: 2.975 cal/g and 30.6% dietary fiber from RS4. Petitioner noted that during prosecution of the ’488 patent, the inventor admitted that this same example from Dohl I had a calculated calorie count within the claimed range. Dohl I’s tortilla is a starch-based food product (claim 1), a type of bread (claim 2), made from a dough (claim 3), and contains vital wheat gluten (claim 6).

Ground 3: Obviousness over Seib, Iesato, and Handbook

• Prior Art Relied Upon: Seib (Patent 5,855,946), Iesato (JP 10276661), and Handbook of Hydrocolloids (“Handbook”).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that this combination, which the Examiner considered during prosecution, renders the claims obvious. Seib teaches that chemically modified RS4 starches can serve as a low-calorie source of dietary fiber in products like breads and crackers. Iesato teaches using RS4 in food products like cakes. The Handbook teaches that resistant starches are treated like fiber for caloric calculations and can be used to reduce calories in foods.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would have been motivated to combine the teachings of Seib, Iesato, and the Handbook to determine optimal ranges for RS4 concentration to achieve a desired low-calorie, high-fiber food product. Petitioner contended that arriving at the claimed ranges was a matter of routine experimentation.
  • Key Aspects: Petitioner argued the claims were only allowed over this combination due to errors stemming from the Patent Owner's arguments. The Patent Owner allegedly made an "apples to oranges" comparison by using data for boiled starch from Seib to argue about the properties of baked products and by improperly comparing data from two distinct in vitro assay methods. Petitioner submitted new analysis to show that, when properly considered, this prior art combination teaches all claim elements.

• Additional Grounds: Petitioner asserted numerous additional anticipation and obviousness challenges. These included anticipation of various claims by Dohl II (Application # 2005/0129823) and Dohl III (Application # 2005/0031756). Obviousness grounds were also asserted over Yeo, Dohl I-III, and Shin (a 2002 journal article) as single references, as well as over combinations of Seib with Yeo, Dohl I-III, and Shin.

4. Key Claim Construction Positions

• Petitioner argued for a construction of the claim term "...wherein the total dietary fiber within the final food product arising from the type IV resistant starch...". Petitioner asserted this requires the recited 14-60% dietary fiber to be solely attributable to the added RS4 and not to other sources of fiber in the recipe. This construction was central to Petitioner's inherency calculations for the prior art.
• Petitioner also contended that "on a dry weight basis" refers to calculating calorie and fiber values after the moisture content of the final food product has been subtracted.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention of the petition was the insufficiency of the Patent Owner's evidence used to swear behind the Dohl references during prosecution. Petitioner argued that the inventor's Rule 131 Declaration was invalid for three primary reasons:
  • 1. The alleged evidence of conception (undated, unsigned lab notes) was not independently corroborated and thus constituted improper inventor testimony.
  • 2. The documents failed to corroborate conception because they lacked a teaching of key claim limitations, such as the specific calorie and fiber ranges.
  • 3. The documents demonstrated a lack of reasonable diligence, showing months of inactivity between the alleged conception and the first experiments using RS4.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. Although the Dohl references and the combination of Seib, Iesato, and Handbook were before the Examiner, Petitioner contended they were not substantively or correctly applied. Petitioner asserted the Examiner erroneously accepted the flawed Holzer 131 Declaration to disqualify the Dohl references and relied on the Patent Owner's misleading arguments regarding the Seib data. Therefore, Petitioner claimed it was presenting new arguments and evidence that address clear errors in the original prosecution.

7. Relief Requested

• Petitioner requested institution of inter partes review and cancellation of claims 1-4 and 6 of the ’488 patent as unpatentable.