Case: 20-1083 Document: 94 Page: 1 Filed: 08/16/2023
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
STEUBEN FOODS, INC.,
Appellant
v.
KATHERINE K. VIDAL, UNDER SECRETARY OF
COMMERCE FOR INTELLECTUAL PROPERTY
AND DIRECTOR OF THE UNITED STATES
PATENT AND TRADEMARK OFFICE,
Intervenor
______________________
2020-1083
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2014-
01235.
______________________
Decided: August 16, 2023
______________________
WILLIAM COOK ALCIATI, Gardella Grace PA, Washing-
ton, DC, for appellant.
DANIEL KAZHDAN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for
Case: 20-1083 Document: 94 Page: 2 Filed: 08/16/2023
2 STEUBEN FOODS, INC. v. VIDAL
intervenor. Also represented by THOMAS W. KRAUSE,
MONICA BARNES LATEEF, FARHEENA YASMEEN RASHEED.
______________________
Before PROST, HUGHES, and CUNNINGHAM, Circuit Judges.
HUGHES, Circuit Judge.
Steuben Foods, Inc. appeals from the Patent Trial and
Appeal Board’s final written decision on remand determin-
ing that claims 18 and 19 of
U.S. Patent No. 6,945,013 are
unpatentable. For the following reasons, we affirm.
I
This case stems from an inter partes review brought by
Nestlé USA, Inc. challenging claims 18, 19, and 20 of the
’013 patent. The challenged claims recite methods for
“aseptically bottling aseptically sterilized foodstuffs.” ’013
patent at claims 18–20. The Board issued a final written
decision finding the challenged claims not unpatentable as
obvious. Nestlé appealed, and we vacated the Board’s deci-
sion for applying an incorrect claim construction of the
term “aseptic.” Nestlé USA, Inc. v. Steuben Foods, Inc.,
686
F. App’x 917, 920 (Fed. Cir. 2017). Specifically, we held that
“aseptic” as used in the ’013 patent is consistent with the
U.S. Food and Drug Administration’s definition of “com-
mercial sterility” set forth in
21 C.F.R. § 113.3.
Id. at 919.
Neither the parties nor the Board proposed this construc-
tion during IPR. We remanded the case for the Board to
apply the correct construction.
Id. at 920.
On remand, Steuben requested an opportunity for ad-
ditional briefing under the new claim construction. The
Board denied this request, reasoning that Steuben was on
notice of this court’s construction of “aseptic” and that our
construction of the term resolved the arguments Steuben
had presented. The Board then issued its final written de-
cision on remand and concluded that claims 18 and 19 are
Case: 20-1083 Document: 94 Page: 3 Filed: 08/16/2023
STEUBEN FOODS, INC. v. VIDAL 3
unpatentable as obvious and that claim 20 is not unpatent-
able as obvious.
Steuben appeals the obviousness determination as to
claims 18 and 19. 1 We have jurisdiction under
28 U.S.C.
§ 1295(a)(4).
II
“We review the Board’s ultimate obviousness determi-
nation de novo and underlying factual findings for substan-
tial evidence.” Celgene Corp. v. Peter,
931 F.3d 1342, 1349
(Fed. Cir. 2019) (citation omitted). “Substantial evidence
. . . means such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.”
Id. (ci-
tations omitted).
III
Steuben’s challenges on appeal pertain to the require-
ment, found in both claims 18 and 19, that the claimed
methods “aseptically disinfect[] the bottles at a rate
greater than 100 bottles per minute.” ’013 patent at
claims 18, 19 (emphasis added). Regarding the require-
ment that disinfection be done “aseptically,” Steuben ar-
gues that the Board failed to make any findings that the
prior art disclosed or rendered obvious sterilizing bottles to
meet the FDA’s commercial sterility requirements. Relat-
edly, Steuben also argues that the Board violated the Ad-
ministrative Procedures Act by denying Steuben’s request
to submit evidence and briefing related to the definition of
“aseptic” we articulated in Nestlé.
In its final written decision on remand, the Board
acknowledged the claim construction for aseptic we articu-
lated in Nestlé but did not directly address the construction
1 We granted Steuben’s motion to dismiss Nestlé
from this appeal following a settlement between the two
entities. See ECF No. 64.
Case: 20-1083 Document: 94 Page: 4 Filed: 08/16/2023
4 STEUBEN FOODS, INC. v. VIDAL
in its unpatentability analysis. In this case, we conclude,
based on the factual findings the Board made, that the
prior art references render obvious the aseptic limitation of
claims 18 and 19.
Specifically, the Board found that the aseptic limita-
tion was taught by the prior art reference Biewendt be-
cause it discloses that milk was “filled under aseptic
conditions” and because Biewendt’s milk “did not have any
negative changes after 15 days of storage at 30 °C and had
less than 10 germs per 0.1 cm3.” J.A. 33–34 (citations omit-
ted). The FDA’s requirement for commercial sterility, on
the other hand, requires the elimination of microorganisms
“having public health significance, as well as microorgan-
isms of nonhealth significance, capable of reproducing in
the food under normal nonrefrigerated conditions of stor-
age and distribution.”
21 C.F.R. § 113.3(e)(2).
The Board supported its findings with substantial evi-
dence, specifically quotations from and citations to the
prior art. Additionally, the ’013 patent recognizes that
prior art methods practiced the aseptic limitation. ’013 pa-
tent at 1:32–34 (“Several packaging techniques, including
extended shelf life (ESL) and aseptic packaging, have
been developed to increase the shelf life of low acid prod-
ucts.” (emphasis added)).
These facts are enough to render obvious sterilizing
bottles to meet the FDA’s requirements for commercial ste-
rility. We therefore affirm that portion of the Board’s deci-
sion. 2
2 Although we affirm the Board’s decision, we note
that the better course of action might well have been for
the Board to allow the parties to submit supplemental
briefing regarding the correct claim construction and then
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STEUBEN FOODS, INC. v. VIDAL 5
Steuben also argues that substantial evidence does not
support the Board’s finding that it would have been obvious
to increase Biewendt’s sterilization rate of 100 bottles per
minute to at least 101 bottles per minute. Steuben argues
that the Board relied on conclusory expert testimony in
reaching this conclusion and ignored the testimony of
Steuben’s own declarant. In this case, the Board relied on
expert testimony and the prior art to make its findings. See
J.A. 27–33. That is substantial evidence in support of the
Board’s conclusion, which, consequently, we affirm.
IV
We have considered Steuben’s remaining arguments
and find them unpersuasive. For the foregoing reasons, we
affirm.
AFFIRMED
COSTS
No costs.
explicitly analyze the prior art in the context of that con-
struction. The Board should be mindful of that in future
cases.
