Holding

In Fonterra Co-operative Group Ltd. v. Arla Foods AMBA, IPR2022-00661, Paper 15 (P.T.A.B. Aug. 31, 2022) and IPR2022-00662, Paper 14 (P.T.A.B. Aug. 31, 2022) the Patent Trial and Appeal Board (“the Board”) denied institution, finding that the petitioner had not adequately established inherent anticipation or inherent obviousness.

Background

The patents challenged were U.S. Patent Nos. 10,709, 146 (“the ’146 patent”) and 10,729,150 (“the ’150 patent”). The two patents share the same priority date. Independent claim 1 of the ’146 patent is representative and reads:

1. A denatured whey protein composition containing:

a total amount of protein of at least 70% (w/w) on a dry weight basis,

a total amount of CMP of at least 16% (w/w) relative to the total amount of protein,

insoluble whey protein particles having a particle size in the range of 1–10 microns,

where the amount of said insoluble whey protein particles is in the range of 50–84% (w/w) relative to the total amount of protein.

(Emphasis added.) The “dry weight basis” was described in the specification as relating “to the weight of the composition or product when it has been dried to a water content of 3% (w/w) water.” Id. at *6.

The petitions relied on calculations known by one of ordinary skill in the art to supplement the prior art-based grounds. IPR2022-00661, Paper 15, at *4. According to Petitioner, “Powder F” disclosed in WO 2013/065014 anticipates certain claims of the ’146 patent, as evidenced by Petitioner’s internal test data and a skilled artisan’s calculations. IPR2022-00661, Paper 15, at *7–8. Petitioner also argued obviousness based on the WO Publication combined with other references. Id. at *13.

Board

The Board found that Petitioner did not establish that the claimed limitations “necessarily result” from practicing the WO Publication, as required for a finding of inherent anticipation. According to the Board, Petitioner did not show the WO Publication’s teaching of “less than 5%” (i.e., 0–5%) “necessarily discloses the required dried to a moisture content of 3%” and, therefore, reads on the “dry weight basis” limitation. Id. The Board concluded that the recited single discrete point of 3% is not anticipated by the WO Publication’s teaching of 0–5%:

[T]he challenged claims require a specific water content unmodified by “about” or any similar term. Ex. 1001, 11:26–29. There are an enormous, and potentially an infinite, number of such discrete points within the continuous range of 0% to 5% water content taught by [the WO Publication]. Under these facts, in the absence of some explanation from Petitioner as to why the conclusion would be warranted, we cannot conclude that [the WO Publication’s] disclosure supports the asserted anticipation of the challenged claims. The present record provides no such explanation. Accordingly, we are not persuaded that Petitioner has shown sufficiently that [the WO Publication] discloses the “dry weight basis” limitation present in all the challenged claims, either expressly or inherently.

Id. at *11.

The Board rejected the Petitioner’s obviousness argument under the same reasoning. Id. at *15.

Take-aways

Inherent anticipation arises when “the prior art necessarily functions in accordance with, or includes, the claimed limitations.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). The Federal Circuit has explained the standard for determining inherency:

Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.

Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1267-69 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).

Patent Owners can overcome inherent anticipation arguments by showing that the Petitioner did not establish that practicing the teachings of the cited reference “necessarily and inevitably” results in the claimed invention.

Without some basis or explanation, “[t]he teaching of a genus by a prior-art reference does not necessarily establish the obviousness of all possible species or subgenera that are encompassed by that genus.” IPR2022-00662, Paper 14 at *11.

With respect to inherency in an obviousness analyses, the Federal Circuit has repeatedly stated that inherent obviousness is a narrow doctrine. Parties attempting to advance this argument must therefore satisfy the strict standards set forth in the case law. An inherent limitation must necessarily be present in the combination of references. It is not enough to merely show that it is likely to be present.