IP Law Daily, PATENT—Fed. Cir.: IPR petitioner failed to show patent for deep fryer oil degradation sensor was obvious, (Sep 12, 2019)

By Cheryl Beise, J.D.

The Board properly found that a person skilled in the art would not be motivated to combine two prior art references and that industry praise supported a finding of nonbviousness.

Substantial evidence supported the Patent Trial and Appeal Board’s determination following inter partes review that a patent owned by Frymaster LLC for measuring cooking oil degradation in a deep fryer using a total polar materials (TPMs) sensor was not unpatentable as obvious, the U.S. Court of Appeals for the Federal Circuit has held. The Board did not err in finding that additional complexity and decreased efficiency would have dissuaded a skilled artisan from integrating a prior art TPM sensor into a prior art apparatus for analyzing oil quality. Nonobviousness was also supported by evidence of industry praise highlighting the integrated innovative oil quality sensor in Frymaster’s electric fryers. Finally, the Board did not abuse its discretion by declining to consider an untimely argument made by the petitioner (Henny Penny Corporation v. Frymaster LLC, September 12, 2019, Lourie, A.).

Frymaster LLC and Henny Penny Corporation ("HPC") manufacture deep fryers. Frymaster owns U.S. Patent 8,497,691 (the ’691 patent). The patent is directed to a system for measuring the state of cooking oil degradation in a deep fryer using a total polar materials (TPMs) sensor for detecting impurities in the oil. When the sensor detects that TPM levels are too high, the system instructs the fryer operator to change the oil. HPC petitioned for inter partes review (IPR) of the ’691 patent. In its petition, HPC challenged representative claim 1 as obvious over U.S. Patent 5,071,527 ("Kauffman") and Japanese Unexamined Patent Application Publication No. 2005-55198 ("Iwaguchi"). Kauffman claims an apparatus "for the complete analysis of used oils, lubricants, and fluids" for use in equipment such as deep fryers, engines, and gear boxes. Kaffman discloses use of an electrode to measure conductivity and current. Iwaguchi, unlike Kauffman, discloses measuring TPMs to monitor oil degradation in deep fryers. The Iwaguchi apparatus cools the cooking oil before detecting TPMs by diverting oil from the frying pot through a "heat dissipator" to a separate detection vessel with a TPM detector.

The PTAB instituted review, but ultimately held that claims 1–3, 5–12, 17–21, and 23 are not unpatentable as obvious. The Board found that Iwaguchi did not teach the specific claimed combination and that a person skilled in the art would not integrate Iwaguchi’s sensor in Kaffman’s apparatus. HPC appealed. The issues on appeal were whether the Board abused its discretion in disregarding certain of HPC’s post-institution arguments about how to incorporate a TPM sensor into a deep fryer and whether the Board erred in concluding that the deep fryer system claimed in the ’691 patent would not have been obvious.

HPC’s untimely argument. Consistent with its institution decision, the Board addressed whether a person of ordinary skill would have been motivated to integrate Iwaguchi’s TPM sensor into Kauffman’s system. The Board declined to consider a new theory—based on modifying Kauffman’s sensor to detect TPMs—that HPC presented in its reply after the Board’s hearing. In its reply, HPC had argued that one skilled in the art "could add the processor of Iwaguchi ... and use the electrical signal from the sensor of Kauffman as a basis for the processor to calculate TPMs."

HPC contended that the Board too narrowly construing its petition. According to HPC, the Board erroneously interpreted the petition as limited to the physical substitution of Iwaguchi’s sensor for Kauffman’s. The Federal Circuit found that the Board did not abuse its discretion by holding HPC to the obviousness theory in its petition. An IPR petitioner may not raise in reply "an entirely new rationale" for why a claim would have been obvious. HPC’s petition said nothing about using Kauffman’s measured electrical parameters to calculate TPM levels, the court noted. Nor did HPC submit any expert testimony with its petition about how to do so. In addition, HPC’s counsel confirmed to the Board that "in the original petition" HPC only proposed integrating Iwaguchi’s sensor into Kauffman’s system. The Board did not abuse its discretion in disregarding HPC’s new argument raised in its reply.

Obviousness. HPC argued that the Board mistakenly found no motivation to combine Iwaguchi’s TPM sensor with Kauffman’s system. According to HPC, the Board placed undue weight on the disadvantages of introducing Iwaguchi’s TPM sensor into Kauffman’s system. HPC also argued that the Board erred in finding Frymaster’s evidence of industry praise to be probative of nonobviousness.

The Federal Circuit found that substantial evidence supported the Board’s determination. The Board recognized that Iwaguchi discloses a TPM sensor, but concluded that a skilled artisan would have been dissuaded from integrating Iwaguchi’s sensor into Kauffman’s system. The Board credited Frymaster’s expert’s testimony that use of Iwaguchi’s method of diverting and cooling the oil through a heat dissipator in Kauffman’s system would introduce "additional plumbing and complexity" and lead to "decreased efficiency." Based on the record, "a reasonable fact finder could have found these tradeoffs to yield an unappetizing combination," the court said.

Regarding Frymaster’s evidence of industry praise, the court noted that the evidence of secondary considerations must have a sufficient "nexus" to the patent claims. The Board considered Frymaster’s evidence of two industry awards, both of which highlighted the integrated innovative oil quality sensors in Frymaster’s electric fryers. HPC argued that the Board should have discounted this evidence because the sensor was already taught in Iwaguchi and therefore was not novel. However, a novel combination or arrangement of known individual elements may serves as the nexus for objective evidence, the court explained. The Board found that evidence of praise was generally directed to the claimed invention as a whole and that both industry awards specifically praised the claimed integrated TPM sensor in Frymaster’s products. The court concluded that Board did not err in finding that this evidence weighed in favor of nonobviousness because the claimed integrated sensor was commensurate in scope with Frymaster’s praised product.

The case is No. 2108-1596.

Attorneys: Allen Marcel Sokal and Kevin W. Kirsch (Baker & Hostetler LLP) and Donald E. Burton (Faruki Ireland Cox Rhinehart & Dusing PLL) for Henny Penny Corp. Joseph Allen Loy, Aron D. Resetarits, Eugene Goryunov, and Jason M. Wilcox (Kirkland & Ellis LLP) for Frymaster LLC.

Companies: Henny Penny Corp.; Frymaster LLC

Cases: Patent FedCirNews