Takeaway: The Board can construe claim terms on a case-by-case basis including between two cases regarding the same patent.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s Decision denying institution of inter partes review (IPR) of claim 40 of the ’188 patent.

According to 37 C.F.R. § 42.71(d), a party requesting rehearing has the burden of showing a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion or reply. Petitioner alleged that the Board erred because (1) the Board’s construction of “asceptic” is inconsistent with other decisions by the Board , and (2) the Board applied an enablement standard that ignored the claimed invention and exceeded what the ’188 patent itself discloses.

Petitioner alleged that the Board’s construction of “asceptic” was inconsistent with the Board’s construction of the term in another proceeding involving the ’188 patent. The Board noted that it is not required to adopt the same construction of a term in every proceeding. The Board considers whether to institute an IPR on a case-by-case basis, taking into account the particular facts of each case.

Under 42 C.F.R. § 42.104(b)(3), Petitioner is required to identify how the challenged claim is to be construed. Petitioner merely adopted the Board’s construction in IPR2014-00055 in which the Board stated that “[f]or purposes of this decision, we…determined that no claim term needs express interpretation at this time.” The Board noted that Petitioner incorrectly assumed this was an express construction of the claim terms. Petitioner offered express construction for other limitations of claim 40 of the ’188 patent, but not for any other terms of claim 40. Thus, the Board concluded that it did not overlook or misapprehend anything that was not present in the first instance in the Petition.

Next, Petitioner argued that the Board’s construction of “asceptic” renders claim 40 indefinite because (1) there is no “FDA level of asceptic,” and (2) to the extent that the construction incorporates the FDA’s standards, such as H2O2 residue, the claim is internally irreconcilable. The Board declined to consider these arguments because Petitioner failed to explain why they were not presented earlier in the Petition. The Board was unpersuaded by Petitioner’s argument that claim 40 is inherently indefinite.

Regarding the enablement question, Petitioner argued that a person of ordinary skill understood how to build an aseptic bottling system, and, therefore, the asserted prior art need not contain all of the details necessary to build an entire system. In its Decision denying institution of IPR, the Board was unpersuaded by Petitioner’s arguments and evidence that the prior art anticipates asceptically disinfecting the bottles to the requisite level. Regarding Petitioner’s obviousness argument in the same proceeding, Petitioner did not rely on any of the secondary references to solve the deficiencies in the alleged anticipatory reference. In the instant proceeding, Petitioner argued that the Board erred by holding the prior art to a higher standard of enablement than the ’188 patent itself can satisfy. The Board disagreed, stating that none of the arguments posited by Petitioner “inform us how we held the prior art to a higher standard of enablement than that of the ’188 patent.” Thus, the Board concluded that it did not misapprehend or overlook Petitioner’s arguments and/or evidence.

NESTLÉ USA, INC. v. STEUBEN FOODS, INC., IPR2015-00023

Paper 17: Denying Petitioner’s Request for Rehearing

Dated: June 29, 2015

Patent 6,536,188

Before: Phillip J. Kauffman, James P. Calve, and Beverly M. Bunting

Written by: Bunting