Frymaster, L.L.C. v. Sherwood Sensing Sols.

• Decision Date: 23 August 2021
• Docket Number: 539 B2,285,Patent 10,IPR2020-00752
• Parties: FRYMASTER, L.L.C. and HENNY PENNY CORP., Petitioner, v. SHERWOOD SENSING SOLUTIONS LLC, Patent Owner.
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board

FRYMASTER, L.L.C. and HENNY PENNY CORP., Petitioner,
v.
SHERWOOD SENSING SOLUTIONS LLC, Patent Owner.

No. IPR2020-00752

Patent 10, 285, 539 B2

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

August 23, 2021

Before PHILLIP J. KAUFFMAN, JAMES A. WORTH, and ERIC C. JESCHKE, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION GRANTING PATENT OWNER'S REVISED MOTION TO AMEND AS TO CANCELING CLAIMS 1-11 DENYING PATENT OWNER'S REVISED MOTION TO AMEND AS TO SUBSTITUTING CLAIMS 12-20 35 U.S.C.§ 318(A)

JESCHKE, ADMINISTRATIVE PATENT JUDGE.

I. BACKGROUND

Frymaster, L.L.C. and Henny Penny Corporation (collectively, "Petitioner") filed a Petition to institute an inter partes review of claims 1-11 (the "challenged claims") of U.S. Patent No. 10, 285, 539 B2 (Ex. 1001, "the '539 patent"). Paper 1 ("Pet."). Sherwood Sensing Solutions LLC ("Patent Owner") timely filed a Patent Owner's Preliminary Response. Paper 7 ("Prelim. Resp"). Upon review of the arguments and supporting evidence, we instituted an inter partes review of all claims and grounds asserted in the Petition. Paper 9 ("Decision on Institution" or "Dec. Inst.").

After institution, Patent Owner did not file a Patent Owner Response, but did file a Motion to Amend (Paper 15, "MTA"). Petitioner filed a Reply in support of the Petition (Paper 25, "Pet. Reply"), and also filed an opposition to Patent Owner's Motion to Amend (Paper 24). On March 26, 2021, pursuant to Patent Owner's request (see MTA 1), we issued Preliminary Guidance on Patent Owner's Motion to Amend. Paper 26 ("PG"). Patent Owner then filed a Revised Motion to Amend with proposed substitute claims 12-20 (Paper 27, "RMTA"), but did not file a Sur-reply to Petitioner's Reply. Petitioner opposed Patent Owner's Revised MTA. Paper 31 ("RMTA Opp."). Patent Owner filed a Reply in support of its Revised Motion to Amend (Paper 35 ("RMTA Reply")), to which Petitioner filed a Sur-reply (Paper 36 ("RMTA Sur-reply")).

Petitioner relies on the declaration testimony of Dr. Kevin M. Keener, Ph.D., P.E. filed with the Petition (Ex. 1004, "Keener Pet. Decl"), and with the Opposition to Patent Owner's Revised Motion to Amend (Ex. 1037, "Keener RMTA Decl.") (including the authorized errata (Ex. 1059)).

Patent Owner relies on the declaration testimony of Dr. John P. Abraham, Ph.D. filed with the Revised Motion to Amend (Ex. 2006, "Abraham RMTA Decl"), and with the Reply in Support of the Revised Motion to Amend (Ex. 2007, "Abraham RMTA Reply Decl"). An oral argument in this proceeding was held on July 14, 2021, and a copy of the transcript was entered into the record. Paper 40 ("Tr.").

We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R § 42.73. For the reasons below, we grant in part Patent Owner's Revised Motion to Amend as to canceling claims 1-11. We deny, however, Patent Owner's Revised Motion to Amend as to substituting proposed claims 12-20. We determine Patent Owner has failed to cany its burden on the statutory and regulatory requirements as to the Revised Motion to Amend, and, to the extent Patent Owner did cany its burden, we determine that Petitioner has proven, by a preponderance of the evidence, the unpatentability of proposed substitute claims 12-20.

A. Related Proceedings

The parties identify two proceedings in U.S. District Courts involving the '539 patent: (1) Sherwood Sensing Solutions LLC v. Frymaster, L.L.C., No. 5:19-cv-01351 (W.D. La.), filed October 15, 2019, and (2) Sherwood Sensing Solutions LLC v. Henny Penny Corp., No. 3:19-cv-00366 (S.D. Oh.), filed November 19, 2019 (collectively, the "District Court Litigations"). Paper 22 (Petitioner's Amended Mandatory Notices) § B; Paper 13 (Patent Owner's Amended Mandatory Notices) § 2.

B. The '539 Patent

The '539 patent relates to systems and methods for frying food. Ex. 1001, code (57), 1:21-23. According to the '539 patent, "[conventional frying processes are carried out with heated cooking oil, in which food items are immersed [and] exposed to air," which "results in deterioration of the quality and appearance of the oil due to constant oxidation of the oil by air." Id. at 1:27-30. With the conventional processes, the '539 patent states, "[t]he quality of the fried food may be spoiled by partially oxidized oil, and consumption of the fried food can pose a health hazard." Id. at 1:30-33. In addition, the '539 patent describes how, in conventional processes, "oil penetrates into the food items being fried" and how "[r]emoving cooking oil from the surface of the food items . . . leaves substantial amounts of oil in the interior of the food items," which, in turn, "adds to the caloric content of the food items." Id. at 1:34-41.

Figure 1 is reproduced below:

(Image Omitted.)

Figure 1 depicts "a frying system in accordance with one embodiment." Ex. 1001, 3:7-8. In this embodiment, frying system 1 includes "a frying tank 2 into which food to be fried is inserted" and "vat 3 for heating cooking oil 4 by means of a heating element 5 inside the vat 3." Id. at 3:20-23.^[1] "Under the action of the oil pump 6, oil 4 is pumped out of the vat 3, and then passes through a segment of a pipe 7 to a pipe 8 before entering the frying tank 2 through the top of the frying tank 2." Id at 3:27- 30. In addition, "[o]il 4 leaves the frying tank 2 from the bottom of the frying tank 2 through a pipe 9, and then passes through oil filter 10 before returning to the vat 3." Id at 3:30-33. System 1 also includes "vacuum pump 33 for removing air from the frying tank 2." Id. at 3:42-44.

Figure 2 is reproduced below:

(Image Omitted.)

Figure 2 depicts frying tank 2 from the system in Figure 1. Ex. 1001, 3:9. Tank 2 includes hinged side door 20, "shown in its open position ... so as to expose an interior frying chamber 21." Id. at 346-49. "In use, the door 20 is closed, as shown in" Figure 1. Id. at 349-50. Tank 2 also includes "cylindrical frying drum 24," "formed as a wire mesh basket, so that when the frying chamber 21 is filled with cooking oil 4, the oil contacts food items 25 located inside the frying drum 24." Id. at 3:50-54.

In use, after the food items are inserted and door 20 is closed, "oil pump 6 is activated so as to cause preheated cooking oil 4 to flow from the vat 3 through the pipes 7 and 8 into the interior chamber 21 of the frying tank 2." Id. at 3:55-64. "The flow rate of the oil into the interior chamber under the influence of the oil pump 6 is adjusted to exceed the drainage rate from the interior chamber 21 via the pipe 9." Id. at 3:64-67. "The oil level in the interior chamber 21 thus rises . . . until all air initially present in the interior chamber 21 has been expelled from the interior chamber 21 and the interior chamber 21 is completely filled with oil." Id. at 3:67-4:7; see also id. at 4:22-25 ("The cooking oil is then confined to a closed system which prevents avoids exposure of the oil to air so as to prevent oxidation of the oil and release of oil vapors and cooking odors into the environment."). The cooking oil continues to circulate as the food is fried. Id. at 4:25-31. After the cooking oil is removed from interior chamber 21, vacuum pump 33 is "activated[, ] which removes air from the interior chamber 21[, ] causing excess oil to be leeched out of the fried food items 25." Id. at 4:47-51.

Figure 4 is reproduced below:

(Image Omitted.)

Figure 4 depicts "a frying system in accordance with another embodiment of the invention having an open frying tank." Ex. 1001, 3:13-14. The depicted system includes "frying tank 42 for frying food items 47" using basket 48, and also includes "vacuum chamber 44 for deoiling fried food items." Id. at 542-44. The '539 patent discloses that "frying tank 42 has an open top, so that cooking oil 46 in the tank is exposed to ambient air, and hence to atmospheric pressure." Id. at 544-46.

C. Illustrative Claim

Petitioner challenges claims 1-11, of which only claim 1 is independent. Claim 1 is below, reformatted as compared to the '539 patent:

1. A system for frying one or more food items, comprising

(a) a frying tank having an interior chamber configured to receive the one or more food items, the frying tank including a heater for heating cooking oil; and

(b) a cooking oil delivery system comprising

a vat including a substantially hollow inner chamber for holding cooking oil, and

a pump

the pump being activated to deliver cooking oil from the vat to the interior chamber of the frying tank in an amount that exceeds the drainage of cooking oil from the interior chamber or the cooking oil that is removed from the interior chamber during the cooking process so as to raise the cooking oil level to continuously maintain a desired cooking oil level in the interior chamber of the frying tank

Ex. 1001, 6:15-31.

D. Asserted Grounds of Unpatentability

Petitioner challenges claims 1-11 on the following grounds:

Claim(s) Challenged	35U.S.C. §[2]	Reference(s)/Basis
1-11	102	Campbell[3]
1-11	102	Van Den Berg[4]
1-11	102	Sugimoto[5]

II. DISCUSSION

A. The Level of Ordinary Skill in the Art

The level of ordinary skill in the art is "a prism or lens" through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPACInc, 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the "type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the...