Paper 18
`Trials@uspto.gov
`Entered: November 30, 2017
`Tel: 571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`____________
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.108
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`
`
`Trials@uspto.gov
`Entered: November 30, 2017
`Tel: 571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`____________
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314; 37 C.F.R. § 42.108
`
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`I. INTRODUCTION
`Petitioner filed a Petition for inter partes review of claims 1–36 of
`U.S. Patent No. 7,608,436 B2 (Ex. 1001, “the ’436 patent”). Paper 1
`(“Pet.”). Patent Owner filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a), which
`requires demonstration of a reasonable likelihood that Petitioner would
`prevail at trial with respect to at least one challenged patent claim, we
`institute review of claims 1–4, 15–29, 31, and 32 of the ’436 patent.
`The following findings of fact and conclusions of law are not final,
`but are made for the sole purpose of determining whether Petitioner meets
`the threshold for initiating review. Any final decision shall be based on the
`full trial record, including any response timely filed by Patent Owner. Any
`arguments not raised by Patent Owner in a timely-filed response shall be
`deemed waived, even if they were presented in the Preliminary Response.
`Taking account of the information provided at this stage of the
`proceeding, we determine that Petitioner shows sufficiently the following
`facts for the purposes of trial institution.
`A. Related Proceedings
`Petitioner submits that there are no related proceedings. Pet. 1.
`Petitioner states that it filed, concurrently with the instant Petition, a petition
`for inter partes review of a related patent, U.S. Patent No. 8,057,840 B2.
`Id.; see Case IPR2017-01507 (“IPR1507”). Concurrently herewith, we issue
`a decision in IPR1507.
`
`B. The ’436 Patent (Ex. 1001)
`The ’436 patent is entitled “Process for Producing Saccharide
`Oligomers.” Ex. 1001, Title. The specification discloses “a need for edible
`
`2
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`materials which have a reduced content of easily digestible carbohydrates,
`and which can be used in place of, or in addition to, conventional
`carbohydrate products in foods,” such as candy and yogurt. Ex. 1001, 1:17–
`20, 18:60–19:38 (Examples 11, 12, and 13).
`The specification further discloses a process for making a slowly
`digestible saccharide oligomer composition that is suitable for use in foods.
`Id. at 2:33–35. The process may be performed on a feed composition that
`includes monosaccharides and oligosaccharides in a dry solids concentration
`of up to at least about 70% by weight. Id. at 2:62–64. Suitable starting
`materials for the feed composition include dextrose syrups, corn syrup, and
`maltodextrose solutions. Id. at 3: 11–15. The feed composition may be
`subjected to a heating step and a contacting step. Id. at 3:42–60, 4:20–38,
`19:41–58 (claim 1). During the contacting step, the feed composition may
`be contacted with a catalyst, such as an enzyme or acid, for a period of time
`sufficient to accelerate the rate of cleavage or formation of glucosyl bonds to
`cause formation of non-linear oligosaccharides. Id. at 15:23–60
`(Example 6), 16:29–66 (Example 8), 19:48–51 (claim 1).
`According to the specification, “[t]he product composition produced
`by the treatment with acid, enzyme, or both, has an increased concentration
`on a dry solids basis of non-linear saccharide oligomers.” Id. at 5:28–30.
`The “product composition” has “a higher concentration of non-linear
`oligosaccharides than linear oligosaccharides” and is characterized by “non-
`linear saccharide oligomers having a degree of polymerization of at least
`three in a concentration of at least about 20% by weight on a dry solids
`basis.” Id. at 19:51–58 (claim 1).
`
`
`
`3
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`C. Illustrative Claim
`Claim 1, the only independent claim, is reproduced below:
`1. A process for preparing saccharide oligomers,
`comprising:
`
`heating an aqueous feed composition that comprises at
`least one monosaccharide or linear saccharide oligomer, and
`that has a solids concentration of at least about 70% by weight,
`to a temperature of at least about 40° C; and
`contacting the feed composition with at least one catalyst
`that accelerates the rate of cleavage or formation of glucosyl
`bonds for a time sufficient to cause formation of non-linear
`saccharide oligomers, wherein a product composition is
`produced that contains a higher concentration of non-linear
`saccharide oligomers than linear saccharide oligomers; wherein
`the product composition comprises non-linear saccharide
`oligomers having a degree of polymerization of at least three in
`a concentration of at least about 20% by weight on a dry solids
`basis.
`
`D. Evidence Relied Upon
`The Petition asserts the following prior art references in the grounds
`of unpatentability:
`(1) US Pat. No. 4,518,581, issued to Toshio Miyake et al. on May 21,
`1985 (Ex. 1005, “Miyake”);
`(2) US Pat. No. 5,424,418, issued to Pierrick Duflot on June 13, 1995
`(Ex. 1006, “Duflot”);
`(3) WO 98/41545 patent application to Pankaj Shah et al., published
`September 24, 1998 (Ex. 1008, “Shah”);
`(4) S.A.S. Craig et al., Polydextrose as Soluble Fiber and
`Complex Carbohydrate, in Complex Carbohydrates in Foods 229–247
`(Susan Sungsoo Cho et al. eds. 1999) (Ex. 1009, “Craig”);
`
`4
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`(5) US Pat. No. 2,610,930, issued to James E. Cleland on
`September 16, 1952 (Ex. 1007, “Cleland”);
`(6) US Pat. No. 7,638,151 B2, issued to Gang Duan et al. on
`December 29, 2009 (Ex. 1010, “Duan”).
`The Petition is supported by the Declaration of Dr. Alexei
`Demchenko, which the Petition identifies as Exhibit 1002 (Pet. v), but which
`appears in the record as Paper 4. For the purposes of this decision, we
`determine that Dr. Demchenko is qualified to opine from the perspective of a
`person of ordinary skill in the art at the time of the invention. Ex. 1003
`(Dr. Demchenko’s curriculum vitae).
`E. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–36 of the ’436
`patent on the following grounds (Pet. 5):
`Claims
`
`References
`
`Basis
`
`§ 102(b)
`§ 103
`§ 102(b)
`§ 103
`§ 102(b)
`§ 103
`§ 102(b)
`§ 102(b)
`
`Mikaye
`Miyake1
`Duflot
`Duflot and
`Cleland
`Shah
`Shah and Craig
`Shah, Craig, and
`Cleland
`Duan
`
`1, 3, 4, 7–9, 11, 15, 25–30, 32
`1–13, 15, 16, 23–30, 32
`1, 3–9, 11, 13–17, 23–29, 31–33
`1–9, 11, 13–29, 31–33
`1–4, 15–18, 23–29, 31, 32
`1–4, 15–18, 23–29, 31, 32
`1–4, 15–29, 31, 32
`1–8, 11–16, 23–31, 34–36
`
`
`1 The Petition identifies “a POSA’s knowledge” as prior art evidence in the
`grounds based on obviousness. Pet. 5. We consider evidence, reflecting the
`5
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`We consider the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Petitioner submits that an ordinary artisan would typically have
`had at least a Master’s Degree in the chemical arts and two or three years of
`experience in carbohydrate synthesis, analysis, or process development.
`Pet. 6. Petitioner’s definition, which is not challenged in the Preliminary
`Response, is comparable to the level of skill reflected in the asserted prior
`art. For purposes of this decision, we find that the prior art itself is sufficient
`to demonstrate the level of ordinary skill in the art at the time of the
`invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`(the prior art itself can reflect appropriate level of ordinary skill in the art).
`B. Claim Construction
`The Board interprets claims in an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent.” 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016). Under that standard, claim terms are given their ordinary and
`customary meaning in view of the specification, as understood by a person
`of ordinary skill in the art at the time of the invention. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`We resolve disputed claim terms only to the extent necessary to our
`decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd.,
`
`background knowledge of a person of ordinary skill in the art, to the extent
`that it is identified and analyzed in the briefs.
`
`
`6
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that
`are in controversy, and only to the extent necessary to resolve the
`controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999))). We determine that only one claim term requires
`express construction at this stage of the proceeding—namely, the term
`“product composition” that appears in claim 1. Ex. 1001, 19:51–52, 54.
`Although Petitioner does not propose an express definition for that term
`(Pet. 22–28), the Petition assumes that a “product composition” (falling
`within the scope of claim 1) can be the product of any multi-step process
`that includes, as several of its steps, heating and “contacting” a feed
`composition with a catalyst. See Pet. 32–33 (discussing Miyake), 43–44
`(discussing Duflot).
`Stated somewhat differently, the Petition assumes that claim 1 can be
`met by a prior art process that includes additional manipulation or
`processing of the direct product of the “contacting” step to produce a
`“product composition” that exhibits the properties and characteristics set
`forth in the claim (including the limitation that requires the “product
`composition” to have “a higher concentration of non-linear saccharide
`oligomers than linear saccharide oligomers”). Ex. 1001, 19:51–58; see
`Pet. 32–33 (acknowledging that the product obtained directly from the
`contacting step in Miyake does not meet the specified characteristics of the
`claimed “product composition”); 43–44 (asserting that Duflot’s product,
`derived from a fractionation step that follows a contacting step, is a “product
`composition” within the meaning of claim 1). Patent Owner, for its part,
`counters that the term “product composition” cannot reasonably be
`
`7
`
`
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`
`construed to capture compositions that are not “the direct reaction product of
`the contacting step.” Prelim. Resp. 14.
`We agree with Patent Owner that the “the broadest reasonable
`interpretation of the claimed ‘product composition’ is the direct reaction
`product of the contacting step.” Id. Petitioner’s contrary assumption results
`in an unreasonably broad claim scope that would embrace, for example,
`“fractioning off only a minor non-linear oligosaccharide fraction from a
`complex mixture, or even dumping non-linear oligosaccharides into a mostly
`linear oligosaccharide mixture.” Id. at 14 n.4.
`Our construction is the broadest reasonable interpretation that
`comports with the intrinsic evidence. The “wherein” clause of claim 1 is
`part of an indented paragraph that sets forth the “contacting” limitation; it
`does not appear as a distinct limitation in a separate paragraph. Ex. 1001,
`19:51–58; Prelim. Resp. 11. The phrase “is produced,” which directly
`follows the term “product composition” in claim 1, further signals that the
`composition is produced from the contacting step. Ex. 1001, 19:52. Our
`conclusion, moreover, is consistent with the specification, which informs
`that “[t]he product composition produced by the treatment with acid,
`enzyme, or both, has an increased concentration on a dry solids basis of non-
`linear saccharide oligomers.” Id. at 5:28–30 (emphasis added); Prelim.
`Resp. 12. On this record, we agree with Patent Owner that the “comprising”
`transitional phrase does not compel a different result. Prelim. Resp. 12–13;
`Ex. 1001, 19:41–42.
`
`
`
`
`8
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`C. Anticipation by Shah (Ground 5)
`Petitioner challenges claims 1–4, 15–18, 23–29, 31, and 32 based on
`anticipation by Shah. Pet. 5 (Ground 5). Our analysis focuses on claim 1,
`the only independent claim.
`(1) Claim 1
`We first address whether the Petition identifies information sufficient
`to show that Shah anticipates the process of claim 1. This ground is based
`on Shah’s disclosure of two embodiments—Example 10 (first row,
`“Embodiment A”) and Example 11 (second row, “Embodiment B”). Pet. 52.
`According to Petitioner, those embodiments relate to a process of heating a
`feed composition to at least about 40˚C (150–160˚C in Embodiment A; 150–
`166˚C in Embodiment B), and contacting the composition with a catalyst
`(phosphoric acid in Embodiment A; a combination of citric acid and
`hydrochloric acid in Embodiment B) to produce a product composition that
`meets the limitations of claim 1. Id. at 51–52, 54–58. Based on the
`information presented at this stage of the proceeding, we find that Petitioner
`demonstrates a reasonable likelihood of prevailing at trial in showing that
`claim 1 is anticipated by Shah. Id.; Ex. 1008, 21:28–23:41.
`On that point, the Petition acknowledges that “Shah discloses the
`preparation of polydextrose.” Pet. 54; see id. at 55 (“The product
`composition is a polydextrose that is a non-linear saccharide oligomer.”).
`Patent Owner, for its part, comes forward with information that
`“polydextrose is not a ‘saccharide oligomer’ as properly interpreted in the
`context of the ’436 [p]atent.” Prelim. Resp. 37. We decline to draw any
`conclusions about that disputed issue on this preliminary record, except to
`observe that the Petition is supported by argument and evidence (including
`
`9
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`opinion testimony) that is sufficient to demonstrate a reasonable likelihood
`of prevailing at trial. See Pet. 54 (citing Paper 4 ¶ 268). We will resolve
`that dispute, if necessary, in any final written decision based on the full trial
`record, including information presented in a timely-filed patent owner’s
`response. As a reminder, any arguments not raised in a response are deemed
`waived, even if they were presented in a preliminary response.
`
`On this record, we are persuaded that Petitioner demonstrates a
`reasonable likelihood of prevailing at trial in showing that Shah anticipates
`the process of claim 1.
`(2) Claims 2–4, 15–18, 23–29, 31, and 32
`The Petition asserts that certain dependent claims (Claims 2–4, 15–18,
`23–29, 31 and 32) are anticipated by Shah. Pet. 5, 58–63. Based on our
`review of the information presented at this stage of the proceeding, and
`without reaching any preliminary findings or conclusions on the merits, we
`determine that inclusion of these independent claims will not unduly
`complicate the trial. Inclusion, moreover, will advance our overarching goal
`of securing the just, speedy, and efficient resolution of the parties’ dispute.
`See 37 C.F.R. §§ 42.1(b), 42.108 (reflecting the Board’s mission of securing
`“the just, speedy, and inexpensive resolution” of patentability disputes).
`Accordingly, having determined that Petitioner satisfies the threshold
`showing for institution under 35 U.S.C. § 314(a) with respect to claim 1, we
`exercise our discretion under 37 C.F.R. § 42.108(a) and order that the trial
`shall proceed on all other claims challenged as anticipated by Shah.
`
`D. Obviousness Challenges Asserting Shah (Grounds 6 and 7)
`Petitioner asserts two obviousness challenges based on Shah; one in
`combination with Craig, and another in combination with Craig and Cleland.
`
`10
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`Pet. 5, 51–63. Those challenges involve issues that overlap, or are closely
`related to, the issues raised in connection with the ground based on
`anticipation by Shah. See id. at 51–63 (Petition, intertwining the argument
`and evidence pertaining to the ground based on anticipation by Shah and the
`grounds based on obviousness over Shah and one or more other references).
`Based on our review of the information presented at this stage of the
`proceeding, we determine that inclusion of the obviousness challenges based
`on Shah will not unduly complicate the trial. Inclusion, moreover, will
`advance our overarching goal of securing the just, speedy, and efficient
`resolution of the parties’ dispute. See 37 C.F.R. §§ 42.1(b), 42.108
`(reflecting the Board’s mission of securing “the just, speedy, and
`inexpensive resolution” of patentability disputes).
`Further, “anticipation is the epitome of obviousness.” Cohesive
`Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1363–64 (Fed. Cir. 2008)
`(quoting In re Kalm, 378 F.2d 959, 962 (CCPA 1967)). Having determined
`that the Petition makes out the threshold showing for review of claim 1
`based on anticipation by Shah, we conclude that the Petition shows
`sufficiently that the subject matter of claim 1 would have been obvious over
`the combined disclosures of Shah and Craig, or over the combined
`disclosures of Shah, Craig, and Cleland. See Pet. 5, 51–63 (intertwining the
`analysis of those grounds).
`Accordingly, the trial shall proceed on all grounds that raise Shah and
`with respect to all claims asserted in those grounds. See Pet. 5 (Grounds 5–
`7); see 35 U.S.C. § 314 (a) (authorizing institution of an inter partes review
`where a petitioner shows a reasonable likelihood of prevailing with respect
`to at least one challenged patent claim).
`
`11
`
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`Case IPR2017-01506
`Patent 7,608,436 B2
`
`
`E. Other Challenges (Grounds 1–4 and 8)
`The Petition asserts additional challenges that are based on Miyake,
`Duflot (alone and with Cleland), and Duan. Pet. 5 (Grounds 1–4, 8). As
`explained above, on this record, we determine that claim 1 requires that “a
`product composition is produced” by the contacting step. Ex. 1001, 19:47–
`58. In view of that determination, we deny institution of trial on the
`challenges that assert Miyake and Duflot. Those challenges rest on
`Petitioner’s erroneous claim construction that claim 1 is met if an
`intervening step, performed after the contacting step, results in “a product
`composition.” Id.; Pet. 32–33 (acknowledging that the reaction product
`obtained directly from the contacting step in Miyake has an “isomaltrotriose
`content of 10.2%”) (quoting Ex. 1005, 9:10–14); Pet. 44–43 (directing us to
`a reaction product in Duflot that is derived after a fractionation step, which
`follows a contacting step); see Ex. 1006, 13:49–55 (Duflot, describing the
`fractionation step). For reasons stated in the Preliminary Response, we
`decline to institute trial on the grounds based on Miyake or Duflot because
`Petitioner fails to show sufficiently that either reference discloses or
`suggests a “product composition” that “is produced” by a contacting step as
`required by each challenged claim as construed above. Prelim. Resp. 16–17
`(discussing the grounds based on Miyake); 25–28 (discussing the grounds
`based on Duflot).
`As for the ground based on Duan, the Petition fails to direct us to
`evidence sufficient to show that the reference discloses an aqueous feed
`composition “that has a solids concentration of at least about 70% by
`weight” as required by claim 1. Ex. 1001, 19:46–47; Pet. 65
`(acknowledging that Duan begins with “a 28% slurry of rye flour”). Patent
`
`12
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`Case IPR2017-01506
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`
`Owner persuasively shows that the Petition conflates the sugar content and
`the solids content in the aqueous feed composition disclosed by Duan.
`Prelim. Resp. 43–47. On that point, the Petition directs us to a disclosure in
`Duan that describes “syrups containing greater than 50% maltose,” and
`states without citation to any objective proof that such a syrup “encompasses
`feed compositions containing greater than 70% solids” as required by
`claim 1. Pet. 65 (emphasis omitted). As Patent Owner points out, the
`Petition ignores Duan’s further disclosure that the percentage is reported as a
`fraction “of the total sugar content” and not as a solids concentration of the
`slurry. Prelim. Resp. 44–45 (quoting Duan, Ex. 1010, 3:44–52. On this
`record, the Petition fails to direct us to persuasive information tending to
`establish that Duan’s aqueous feed composition meets the requirements of
`claim 1. Ex. 1001, 19:44–47 (specifying “an aqueous feed composition”
`having “a solids concentration of at least about 70% by weight”).
`III. CONCLUSION
`
`Accordingly, we institute an inter partes review as set forth in the
`Order below. Trial shall commence on the entry date of this decision.
`
`IV. ORDER
`
`It is
`ORDERED that an inter partes review is instituted on the following
`grounds:
`(1) Whether claims 1–4, 15–18, 23–29, 31, and 32 of the ’436 patent
`are anticipated under 35 U.S.C. § 102(b) by Shah;
`
`
`13
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`Case IPR2017-01506
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`
`
`(2) Whether claims 1–4, 15–18, 23–29, 31, and 32 of the ’436 patent
`are obvious under 35 U.S.C. § 103 over the combined disclosures of Shah
`and Craig; and
`(3) Whether claims 1–4, 15–18, 23–29, 31, and 32 of the ’436 patent
`are obvious under 35 U.S.C. § 103 over the combined disclosures of Shah,
`Craig, and Cleland;
`FURTHER ORDERED that no other grounds of unpatentability are
`authorized during the trial; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
`will commence on the entry date of this decision.
`
`PETITIONER:
`David L. Glandorf
`Joseph Evall
`Daniel J. Thomasch
`GIBSON, DUNN & CRUTCHER LLP
`dglandorf@gibsondunn.com
`jevall@gibsondunn.com
`dthomasch@gibsondunn.com
`
`
`PATENT OWNER:
`Paul H. Berghoff
`James V. Suggs
`S. Richard Carden
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`Berghoff@mbhb.com
`Suggs@mbhb.com
`Carden@mbhb.com
`
`
`
`14
`
`
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