Fla. Food Prods. v. Kerry Grp. Servs. Int'l

• Decision Date: 26 April 2023
• Docket Number: IPR2022-00006,Patent 11,071,304 B2
• Parties: FLORIDA FOOD PRODUCTS, LLC, Petitioner, v. KERRY GROUP SERVICES INT'L LTD., Patent Owner.
• Court: Patent Trial and Appeal Board

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FLORIDA FOOD PRODUCTS, LLC, Petitioner,
v.
KERRY GROUP SERVICES INT'L LTD., Patent Owner.

No. IPR2022-00006

Patent 11,071,304 B2

United States Patent and Trademark Office, Patent Trial and Appeal Board

April 26, 2023

FOR PETITIONER: Louis L. Campbell Brian E. Ferguson Juan C. Yaquian Brett Johnson Michael Bittner Winston & Strawn LLP

FOR PATENT OWNER: Mark Boland Raja N. Saliba Michael G. Raucci L. Roman Rachuba Sughrue Mion, PLLC

Before CHRISTOPHER L. CRUMBLEY, CHRISTOPHER M. KAISER, and JULIA HEANEY, Administrative Patent Judges.

JUDGMENT

CRUMBLEY, Administrative Patent Judge.

Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 318(a)

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I. INTRODUCTION

Florida Food Products, LLC ("FFP") filed a Corrected Petition (Paper 12, "Pet.") requesting the Board institute an inter partes review of claims 1-5 of U.S. Patent No. 11,071,304 B2 (Ex. 1001, "the '304 patent"). Kerry Group Services International Ltd. ("Kerry"), which identified itself as the owner of the '304 patent, filed a Preliminary Response to the Petition. Paper 17. We subsequently granted authorization for FFP to file a limited Reply to the Preliminary Response (Paper 20), followed by a Sur-Reply from Kerry (Paper 23).

Upon consideration of the Petition and the evidence, we determined that FFP had demonstrated a reasonable likelihood that it would prevail with respect to at least one claim of the '304 patent. Paper 26 ("Decision on Institution" or "DI"). Pursuant to the Supreme Court's decision in SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018), and USPTO Guidance,^[1]we instituted review of all challenged claims on all asserted grounds. Id.

Following institution of trial, Kerry filed a Patent Owner Response (Paper 31, "PO Resp."), FFP filed a Reply (Paper 33, "Reply"), and Kerry filed a Sur-reply (Paper 34, "Sur-reply").

In support of their respective positions, FFP relies on the testimony of Steven W. Baldwin, Ph.D. (Ex. 1002, "Baldwin Declaration") and Kerry relies on the testimony of Andrew L. Milkowski, Ph.D. (Ex. 2001, "Milkowski Declaration"; Ex. 2014, "Second Milkowski Declaration").

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Kerry took cross-examination testimony of Dr. Baldwin via deposition and submitted the transcript (Ex. 2015); FFP did the same with Dr. Milkowski (Ex. 1037).

An oral hearing was held on January 24, 2023, and a transcript of the hearing is included in the record (Paper 42, "Tr.").

We have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, we determine that FFP has shown by a preponderance of the evidence that claims 1-5 of the '304 patent are unpatentable.

A. Related Proceedings

The parties have not indicated any related administrative or judicial proceedings involving the '304 patent, but do discuss the Board's previous decision in an appeal (Appeal 2020-006388) involving the application that issued as the '304 patent. Pet. 66-67; Paper 17.

B. The '304 Patent

The '304 patent, entitled "Method and Composition for Preparing Cured Meat Products," issued July 27, 2021, with claims 1-5. Ex. 1001, codes (54), (45), 12:30-61. The '304 patent describes a curing agent comprising a plant-based nitrite, prepared using an organism capable of converting the naturally-occurring nitrates in a plant material into nitrites. Id. at code (57). The patent also describes curing or preserving meat using this curing agent. Id.

According to the '304 patent, methods of curing or preserving meat, including by treating the meat with nitrite, have been practiced for many years. Id. at 1:4-9. In one such method, nitrate-containing substances are

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applied to meat, and then bacteria or other organisms convert the nitrate to nitrite. Id. at 1:9-14. The '304 patent discloses that the presence of nitrite gives the meat a distinct color and flavor, but existing methods presented several problems including the processing time required for the organisms to convert the nitrate to nitrite after contacting the curing agent to the meat. Id. at 1:15-24. The '304 patent proposes a solution in which the curing agent is prepared outside the meat curing process, so as to speed up the process and simplify the number of steps involved. Id. at 1:34-44.

The particular curing agent described in the '304 patent is substantially free of non-natural nitrate or nitrite, meaning there is no nitrate or nitrite artificially added to the plant material. Id. at 2:58-64. Preferably, the plant material is a plant derivative that contains at least about 50 ppm nitrate, such as celery. Id. at 2:14-19. The plant derivative can then be subjected to additional steps, including heat treatment or sterilization that reduces the naturally-occurring microbial load. Id. at 3:5-8. Organisms capable of converting nitrate to nitrite, such as preferably S. carnosus, are added to the plant material, after which fermentation is conducted at any suitable temperature. Id. at 3:15-52. Once a predetermined nitrite level is reached in the curing agent, the organisms can be inactivated using known methods such as pasteurization, after which the curing agent can be stored or used to cure meat. Id. at 4:38-49.

C. Challenged Claims

FFP challenged the patentability of claims 1-5 of the '304 patent. Pet. 29. Claims 1 and 5 are independent; claim 1 is illustrative and reads as follows, with line breaks added for readability:

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1. A process for preserving a meat or meat product comprising

contacting the meat or meat product to be preserved with a curing agent comprising a plant-based nitrite and an added organism,

the plant-based nitrite being derived from a plant material comprising at least about 50 ppm nitrate and the organism,

wherein the plant material is heat treated prior to addition of the organism so as to have a reduced microbial load relative to a naturally occurring microbial load of the plant material,

the organism inactivated, wherein the organism was capable of converting nitrate to nitrite before the inactivation, and

preserving the contacted meat or meat product.

Ex. 1001, 12:31-44. Claim 5 is similar to claim 1, but is directed to a cured meat product having been treated with a curing agent according to the process of claim 1. Id. at 12:52-61.

D. Prior Art and Asserted Grounds of Unpatentability

FFP contends that the challenged claims are unpatentable based on the following grounds, each asserted under 35 U.S.C. § 103(a):^[2]

Claim(s) Challenged	References
1-5	Voorde,[3] Hara[4]

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Claim(s) Challenged *References

1, 4, 5	Fast,[5] Voorde, Yamamoto[6]
2	Fast, Voorde, Yamamoto, Stumpf[7]
3	Fast, Voorde, Yamamoto, Kurihara[8]

Pet. 29. FFP contends that Voorde, Fast, Yamamoto, and Kurihara are prior art to the '304 patent under 35 U.S.C. §§ 102(a) and (b), while Hara and Stumpf are prior art under §§ 102(a), (b), or (e). Id. at 30. Kerry did not argue that any of the asserted references are not prior art to the '304 patent. We determine, based on the entirety of the trial record, that all references listed above are prior art to the '304 patent.

II. ANALYSIS

A. Legal Standards

To prevail in its challenge, Petitioner must demonstrate by a preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the

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art. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence,^[9] objective indicia of obviousness or non-obviousness, such as commercial success, long-felt but unsolved needs, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

To show obviousness, it is not enough to merely show that the prior art includes separate references covering each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). "This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known." KSR, 550 U.S. at 418-419.

On the other hand, an obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, a petitioner cannot satisfy its burden of proving obviousness by employing "mere conclusory statements." In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified the prior

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art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) ("In determining whether there would have been a motivation to combine...