PTAB

IPR2022-00661

Fonterra USA Inc v. Arla Foods Amba

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: CMP-containing, high protein denatured whey protein compositions, products containing them, and uses thereof
  • Brief Description: The ’146 patent discloses denatured whey protein compositions intended for use as food ingredients. The compositions are primarily defined by a combination of quantitative parameters: a total protein amount of at least 70% (w/w), a caseinomacropeptide (CMP) amount of at least 16% relative to total protein, an insoluble whey protein particle amount in the range of 50-84% relative to total protein, and a particle size for the insoluble particles in the range of 1-10 microns.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-9, and 17-22 are anticipated by the V Powder Publication.

  • Prior Art Relied Upon: V Powder Publication (WO 2013/065014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the V Powder Publication, particularly its disclosure of a composition called "Powder F," anticipates every limitation of the challenged claims. Petitioner asserted that while V Powder does not explicitly state every claimed numerical value, the properties are either inherent or readily calculable by a Person of Ordinary Skill in the Art (POSA).
      • For independent claim 1, Petitioner contended Powder F met the limitations as follows: (1) total protein was ~76% after a standard adjustment for non-protein nitrogen from the disclosed 80%; (2) CMP content was 22.8%, as shown by extrinsic 2012 test data on Powder F; (3) insoluble particle content was ~53%, a value a POSA could calculate from denaturation data in the reference; and (4) particle size was within 1-10 µm, supported by a disclosed mean of 2.13 µm and confirmed by extrinsic test data.
      • Petitioner mapped limitations of the dependent claims to other disclosures in V Powder, such as Powder F being a powder (claim 2) and its use in high-protein food products (claims 6-9).
    • Key Aspects: A central aspect of this ground is the reliance on extrinsic evidence (contemporaneous internal test data) to argue that the claimed properties of Powder F were necessarily present, even if not explicitly disclosed in the publication itself.

Ground 2: Claims 1-4 are anticipated by Konrad.

  • Prior Art Relied Upon: Konrad (German Application # DE102012216990).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Konrad's examples, particularly Example 2, disclose a denatured whey protein composition meeting all limitations of claims 1-4. As in Ground 1, Petitioner asserted that the claimed parameters were not explicit but were directly calculable from the data provided in Konrad.
      • For independent claim 1, Petitioner calculated from Konrad's Example 2 that the resulting composition had: (1) 91.2% total protein; (2) 18.2% CMP relative to total protein; (3) 70.6% insoluble protein particles; and (4) a mean particle size of 4.14 µm, which falls within the claimed 1-10 µm range.
      • Dependent claims 2-4 were also allegedly disclosed, with Konrad teaching the composition as a powder (claim 2) and disclosing protein and mineral contents that result in a protein:ash ratio of over 21 (claim 3).

Ground 3: Claims 1-4, 6-9, and 17-22 are obvious over the V Powder Publication in view of additional references.

  • Prior Art Relied Upon: V Powder Publication (WO 2013/065014), Havea (WO 2010/120199), and Fanning & Gregory (Australian Application # 2013101214).

  • Core Argument for this Ground:

    • Prior Art Mapping: As an alternative to anticipation, Petitioner argued the claims were obvious. The V Powder Publication teaches a composition (Powder F) that is very close to the claimed invention. A POSA would have been motivated to modify the process or composition of V Powder using routine techniques taught in Havea and Fanning & Gregory to arrive at the claimed invention. For instance, using WPC392 (a starting material taught in both V Powder and Havea) would necessarily result in a product with about 21.2% CMP, meeting the "at least 16%" limitation.
    • Motivation to Combine: A POSA would combine these references because the V Powder Publication explicitly states that its powders were prepared according to the method taught in Havea. Furthermore, Fanning & Gregory taught preparing denatured WPCs according to Havea with a specific goal of achieving particle sizes smaller than 10 µm for desirable organoleptic properties in food products, providing a clear reason to ensure the final product met the claimed particle size range.
    • Expectation of Success: A POSA would have a reasonable expectation of success because combining these teachings involved applying known, conventional methods to well-understood whey protein starting materials to achieve predictable properties related to protein content, composition, and particle size.

  • Additional Grounds: Petitioner asserted additional obviousness challenges for claims 5 and 10-16 based on the V Powder Publication in view of Havea, Konrad, and Konkoly, relying on similar arguments for combining known methods to produce acidified dairy products like yoghurts with specific properties.

4. Key Technical Contentions (Beyond Claim Construction)

  • A key technical contention underlying multiple grounds was that a POSA could and would readily calculate the claimed composition parameters (e.g., % CMP, % insoluble particles) from the data provided in the prior art references, even when those parameters were not explicitly stated. Petitioner supported these calculations with an expert declaration, arguing that such analysis was a routine part of product development and analysis in the food science field.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-22 of the ’146 patent as unpatentable.