In Henny Penny Corp. v. Frymaster LLC[1] the Federal Circuit upheld the Patent Trial and Appeal Board’s inter partes review decision that claims 1-3, 5-12, 17-21, and 23 of Frymaster’s patent U.S. 8,497,691 (‘691 Patent) were not unpatentable as obvious.[2]  It is an interesting case because it illustrates a finding of nonobviousness where the Board not only held that there was no motivation to combine, but endorsed a showing of secondary considerations.

The ‘691 Patent is directed to a system for monitoring the condition of oil used in deep fryers.  The heart of the invention is a sensor that determines the presence of degradation products, such as total polar materials (TPM), in the oil.[3]  The sensor is located in the piping that handles the circulation of the oil to/from a fryer pot, and functions to provide information on the extent of breakdown in the oil to better facilitate oil changeouts.  Personally, I can really appreciate this improvement.  Many years ago, I worked part time as the deep fryer guy at a Fish & Chips restaurant.  My boss did not trust the lowly fry-boys to schedule cleanings, so he made the call on when we changed the oil in the fryers.  There were no sensors back then signaling the need for such a change.  As I recall, oil replacements were only approved when the oil was so dark you couldn’t see a french fry unless it was floating, and so viscous that it peeled the batter off the fish patties when you dropped them into the fryer!

Henny Penny Corp. (HPC) petitioned for an IPR of Frymaster’s ‘691 patent as being obvious.  The Board ultimately found that the ‘691 patent was not obvious, and HPC appealed as to two issues:  first, whether the Board improperly disregarded HPC’s post-institution arguments as to how to incorporate a TPM sensor into a deep fryer; and second, whether the Board had improperly found the ‘691 patent nonobvious.[4]

At the Board two references were involved.  Kaufmann disclosed a device for online analysis of oils, lubricants and fluids using an analyzer to monitor various properties, such as antioxidant depletion, however, TPM was not specifically measured.[5]  Iwaguchi taught measuring TPM’s with a detector to monitor oil degradation in deep fryers.[6]  An important feature of Iwaguchi was that the oil needed to be cooled (e.g., below the higher temperatures of Kauffman) prior to measurement of the TPM to prevent damage to the detector, degradation of oil, and to ensure the integrity of the calculation of TPM level.[7]  HPC argued that it would have been obvious to include Iwaguchi’s processor or sensor in Kauffman’s system to measure TPM’s.[8]  Frymaster replied in its answer that incorporation of Iwaguchi’s sensor in Kauffman’s system wouldn’t provide a predictable outcome of measuring oil quality.[9]  HPC then argued something a bit different, that it wasn’t necessary to actually use Iwaguchi’s sensor in Kauffman’s system, but that Kaufmann taught conductance measurements which could be used to monitor TPM levels, and that Iwaguchi was only needed to show the desirability of measuring TPM’s to monitor oil quality.[10]  Frymaster objected to what it viewed as a new argument, and indeed later at Oral argument, HPC conceded that its original argument was limited to replacing the sensor in Kaufmann for Iwaguchi.[11]  In ruling in favor of Frymaster, the Board disregarded HPC’s “new” argument, and held that there was no motivation to combine in view of the operating temperature issues.[12]  It also found evidence of secondary considerations of nonobviousness based on industry praise for Frymaster’s “Oil Quality Sensor.”[13]

On appeal, the Federal Circuit first upheld the Board’s decision to hold HPC to its original obviousness theory advanced in the petition because of the expedited nature of IPR proceedings and the need to respect petition requirements.[14]  Next, with respect to motivation to combine, HPC argued that when analyzing motivation to combine, the mere fact that the motivation benefit is achieved at the expense of another benefit does not prohibit modifying one reference based on another.[15]  This of course refers to the problems of higher temperature for Iwaguchi’s sensor in Kaufmann’s system.  However, the Federal Circuit held that the benefit gained must be weighed against the benefit lost, and that such a weighing is not only consistent with Winner Int’l Royalty Corp. v. Wang, but with the line of cases holding that a prior art reference must be considered for all of its teaching.[16]  As to the “weighing” itself, the Federal Circuit found in favor of Frymaster.

On appeal, HPC argues that a skilled artisan could have ignored Iwaguchi’s diversion and cooling teachings, integrated only the TPM sensor into Kauffman, and just tolerated the faster degradation of the sensor.  But a reasonable fact finder could have found these tradeoffs to yield an unappetizing combination.[17]

Frymaster’s secondary considerations of nonobviousness included awards from the National Restaurant Association and the Gas Foodservice Equipment Network Consortium.  HPC’s argument on appeal was that the secondary considerations were directed to the TPM sensor, but that the sensor itself was known in the prior art from Iwaguchi.[18]  The Federal Circuit acknowledged HPC’s point, but noted that:

[w]hat was not known in the prior art may well be the novel combination or arrangement of known individual elements.[19]

The Federal Circuit cited WBIP, LLC v. Kohler Co. as support for its holding that the invention as a whole can serve as a nexus for the secondary considerations, and that proof of a nexus is not restricted to a new feature.[20]  Thus, the Federal Circuit concluded that substantial evidence supported the Board’s finding that weight be given to the secondary considerations cited, since claim 1 was commensurate in scope with Frymaster’s product, the industry praise was generally directed to the invention as a whole, and that it included praise for the TPM sensor.[21]

Frymaster’s victories with respect to its motivation to combine arguments and demonstration of secondary considerations provide useful instruction on both subjects.  First, a motivation to combine analysis often involves arguably contrary indications revolving around the references cited.  The Federal Circuit made clear that these contrary indications must be weighed.  Here, the high temperature issues with Kauffman were clearly contrary to that of Iwaguchi.  While these differences did not rise to the level of a “teaching away,” on balance, they weighed against HPC.  Second, when arguing for secondary considerations of nonobviousness, it may be the case that a vital element of the invention is arguably disclosed in the prior art.  In that case it will be necessary to demonstrate that the secondary considerations relate to the entirety of the invention for which the vital element is a part.

[1] 2018-1596 (Fed. Cir. September 12, 2019).
[2] Slip Op. at 2.
[3] Id.
[4] Slip Op. at 3-4.
[5] Slip Op. at 4.
[6] Id.
[7] Slip Op. at 5.
[8] Id.
[9] Slip Op. at 6.
[10] Id.
[11] Id.
[12] Slip Op. at 7.
[13] Slip Op. at 7-8.
[14] Slip Op. at 9.
[15] Slip Op. at 11, referencing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340 (Fed. Cir. 2000).
[16] Slip Op. at 11-12.
[17] Slip Op. at 12.
[18] Slip Op. at 14.  HPC argued that “the identified objective indicia must be directed to what was not known in the prior art,” quoting Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316, 1331 (Fed. Cir. 2017).
[19] Id.
[20] Slip Op. at 15, citing 829 F.3d 1317, 1330 (Fed. Cir. 2016).
[21] Id.


-William Reid

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