Single Value Found Not Inherently Anticipated Or Inherently Obvious From A Range

• Published date: 05 December 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Brady Nash, Thomas Irving, Amanda Murphy and Stacy Lewis

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...