Takeaway: Evidence of inherency in a petition must be provided in the form of affidavits, transcripts of depositions, documents, and things, and must specifically show that the inherent feature is necessarily present in the reference. Unlike in a reexamination, the Board will not shift the burden based on the petitioner merely providing a rationale or evidence tending to show inherency because unlike an Examiner, a petitioner does have the ability to run experiments.  

In its Decision, the Board denied institution of inter partes review, because Petitioner failed to show that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. The ’401 Patent relates to a process for treating food products, such as seafood and meats, through application of a tasteless, super-purified smoke.

Patent Owner contended that instituting inter partes review in this proceeding is barred under 35 U.S.C. § 315(a), (b), and/or (e), by virtue of a real party-in-interest and/or privy relationship between Petitioner and Anova Food, LLC. The Board was not persuaded that institution is statutorily barred, where Petitioner filed the Petition two days before and received a filing date one day before acquiring all of the membership interests in Anova Food, and Anova Food had previously been involved in civil actions that did bar a previous inter partes review filed by Anova Food.

The Petitioner asserted twelve different grounds based on anticipation or obviousness over seventy-three claims. Petitioner relied generally on the findings of the Examiner during reexamination of the ’401 Patent. Based on arguments from Patent Owner, the Board determined that Petitioner had not demonstrated a reasonable likelihood that the references disclosed or rendered obvious all of the elements of the claims. The anticipation rejections in the reexamination relied on inherency that was allegedly shown by two different declarations. The Board explained that one of the declarations used in the reexamination did not meet the requirements for evidence in inter partes review because it was not an affidavit and did not warn the declarant that willful false statements are punishable by fine or imprisonment. Further, the declaration evidence used in the reexamination did not sufficiently show that elements not explicitly disclosed were necessarily present in the prior art reference. Further, the Board explained that the obviousness rejections failed to articulate a persuasive reason why it would have been obvious to modify the prior art references to include the non-disclosed elements. Instead, Petitioner merely provided reasons related to whether it was possible to modify, not why one of ordinary skill would have.

Bumble Bee Foods, LLC v. William R. Kowalski, IPR2014-00224
Paper 18: Decision Denying Institution of Inter Partes Review
Dated: June 5, 2014
Patent: 5,972,401
Before: Francisco C. Prats, Jacqueline Wright Bonilla, and Michelle R. Osinski
Written by: Osinski