Introduction

On September 12, 2019, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in Henny Penny Corporation v. Frymaster LLC. Frymaster LLC is the owner of U.S. Patent No. 8,497,691 (“the ‘691 patent”), titled “Oil Quality Sensor and Adapter for Deep Fryers.”

The ‘691 patent “relates to an oil quality sensor that is installed in a fryer for the purpose of indicating when the cooking oil should be changed for one or more fryer pots.” More specifically, the use of a total polar materials (“TPMs”) sensor in the fryer. “Henny Penny Corporation (“HPC”) appeals from the inter partes review decision of the United States Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) holding claims 1-3, 5-12, 17-21, and 23 of [the ‘691 patent] not unpatentable as obvious.” HPC has further arguments on how the ‘691 patent should be unpatentable based on obviousness, which provides the grounds for their appeal.

Decision

Per the standard, “[they] review[ed] the Board’s legal determinations de novo… [they] review[ed] the Board’s factual findings underlying those determinations for substantial evidence.” HPC has two arguments in regard to their appeal of the original decision. HPC’s arguments are “(1) the Board procedurally erred by too narrowly construing the petition; and (2) that the Board erred in its conclusion of nonobviousness.”

First, “HPC argues that the Board erroneously interpreted the petition as limited to the physical substitution of Iwaguchi’s sensor for Kauffman’s,” which was related prior art to the ‘691 patent. It is known that “because of the expedited nature of [inter partes review] proceedings, ‘[i]t is of the utmost importance that petitioners in the [inter partes review] proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that the supports the grounds for the challenge to each claim.’” It has been determined that the Board did not abuse its discretion because they were not responsible to “‘an entirely new rationale’ for why a claim would be obvious,” which was what HPC had done.

Second, HPC argues that the Board made errors when reevaluating claim 1 as nonobvious. HPC further argues that the Board did not “combine Iwaguchi’s TPM sensor with Kauffman’s system,” which they claim is a mistake of the Board’s. HPC also argues that the Board did not find the proper evidence and “erred in finding Frymaster’s evidence of industry praise to be probative of nonobvious.” There was “substantial evidence [that] supports the Board’s finding of no motivation to combine” Iwaguchi’s TPM sensor with Kauffman’s system. Frymaster’s evidence of prior industry awards praising the product lead the Board to find that “this evidence weighed in favor of nonobviousness because claim 1 was commensurate in scope with Frymaster’s praised product.”

For the reasons above, the Federal Circuit affirms the Board’s judgement.

Conclusion

This decision determines that even though a device may be well known in the prior art, a novel combination of the well-known device with other components may be enough for ensuring a patent is nonobvious.

Full Henny Penny Corporation v. Frymaster LLC decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1596.Opinion.9-12-2019.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

 

BLOG

  • Marin11/18/2015 6:11:11 PM

    PTAB Decisions Give Examples of Patent Eligible Subject Matter

    More
  • Marin11/18/2015 6:15:40 PM

    Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

    More
  • Marin11/18/2015 7:31:35 PM

    When Is a Thesis Prior Art?

    More
  • Marin11/19/2015 2:13:05 PM

    An Innovator’s Dilemma: Design or Utility Patent?

    More
  • Marin1/28/2016 9:10:56 PM

    How Unpredictability Can Affect Obviousness Challenges

    More
  • Marin1/28/2016 9:15:16 PM

    The Patent Trial and Appeal Board Designates Two Decisions as Precedential

    More
  • M. Cionca and I. Kim2/4/2016 5:55:16 PM

    Software Inventions Are Still Patentable!

    More
  • Marin Cionca2/16/2016 6:34:53 PM

    In IPRs, patentees have to show that substitute patent claims are patentable

    More
  • I. Kim PhD2/26/2016 8:47:51 PM

    The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

    More
  • Iris Kim, PhD3/25/2016 8:34:14 PM

    Challenging a Claim’s Validity with Different Standards of Claim Construction

    More
  • Marin Cionca5/17/2016 8:57:23 PM

    Patent Claims Rejection Based on Inherency

    More
  • Iris Kim, PhD6/1/2016 7:04:50 PM

    The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

    More
  • Marin Cionca9/6/2016 9:26:12 PM

    Patent Case Law: New Example of Software as Patentable Subject Matter

    More
  • Marin Cionca9/15/2016 9:47:39 PM

    Patent Law Alert: Federal Circuit Opens Door for More Software Patents

    More
  • Marin Cionca2/21/2017 12:30:52 AM

    Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable

    More
  • Marin Cionca4/25/2017 9:48:49 PM

    Monetization of Patents: How to Make Money with Patents

    More
  • CIONCA - Staff6/15/2017 5:32:14 PM

    Patent Law: Challenging the Patent Claim Definiteness Requirement

    More
  • CIONCA - Staff6/28/2017 8:26:07 PM

    Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution

    More
  • CIONCA - Staff8/9/2017 5:39:58 PM

    Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable

    More
  • CIONCA Staff8/20/2017 3:16:11 PM

    CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued

    More
  • staff9/15/2017 9:33:30 PM

    cionca

    More
  • staff9/27/2017 5:00:12 PM

    Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

    More
  • staff9/27/2017 5:12:07 PM

    CIONCA - Patent and Trademark Law Attorney

    More
  • Staff9/28/2017 7:27:22 PM

    CIONCA

    More
  • Staff11/3/2017 4:20:04 PM

    An Introduction to Provisional Patent Applications

    More
  • 11/10/2017 6:47:44 PM

    An Introduction to Design Patent Applications

    More
  • 11/17/2017 1:24:20 PM

    An Introduction to Patent Searches

    More
  • 12/1/2017 8:01:27 PM

    An Introduction to Patent Cooperation Treaty Applications

    More
  • 12/26/2017 6:04:25 PM

    CIONCA Sets Foot in San Francisco

    More
  • 1/2/2018 7:47:09 PM

    The Lanham Act: Disparagement Provision Violates the First Amendment

    More
  • CIONCA Team1/17/2018 8:12:06 PM

    A Fork in the Road: Production or Protection?

    More
  • CIONCA Team2/16/2018 4:07:48 PM

    Fashion and Intellectual Property

    More
  • 3/8/2018 1:25:46 PM

    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance

    More
  • 3/20/2018 12:50:05 PM

    Andrei Iancu - New Director of the USPTO

    More
  • CIONCA Staff4/13/2018 9:10:04 PM

    It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision

    More
  • CIONCA Staff4/20/2018 5:25:25 PM

    USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.

    More
  • 5/4/2018 7:37:51 PM

    The Hague System for Protection of International Designs

    More
  • CIONCA IP5/17/2018 9:54:58 PM

    Marin Cionca Presents at OCIPLA May 2018 Luncheon

    More
  • 7/3/2018 7:44:33 PM

    Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation

    More
  • Marin Cionca7/31/2018 6:50:05 PM

    My patent expired? Can I still sue for patent infringement?

    More
  • Staff8/16/2018 4:24:01 PM

    Correcting or Changing a Patent After Issue Through the Central Reexamination Unit

    More
  • Staff8/31/2018 7:26:58 PM

    Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout

    More
  • CIONCA Team Member9/17/2018 4:33:20 PM

    Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.

    More
  • Marin Cionca10/1/2018 7:42:12 PM

    Can I Register a Color as a Trademark or Service Mark?

    More
  • CIONCA Team Member10/16/2018 6:50:31 PM

    A Double-Edged Sword: Benefit of Priority or Longer Patent Term

    More
  • CIONCA Team Member11/19/2018 1:07:51 PM

    The Appeals Process

    More
  • Marin Cionca12/8/2018 8:35:06 PM

    IP Assets - Procurement, Enforcement, Monetization

    More
  • CIONCA Team Member12/18/2018 6:12:48 PM

    Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname

    More
  • CIONCA Team Member1/4/2019 4:12:21 PM

    In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement

    More
  • Marin Cionca1/23/2019 9:45:30 PM

    Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent

    More
  • CIONCA Team Member2/5/2019 7:22:27 PM

    TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC

    More
  • CIONCA Team Member2/19/2019 7:12:46 PM

    Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims

    More
  • Marin Cionca3/1/2019 9:36:50 PM

    USPTO Director Andrei Iancu Visits Orange County!

    More
  • CIONCA Team Member3/21/2019 3:49:43 PM

    Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.

    More
  • CIONCA Team Member4/3/2019 7:25:37 PM

    The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential

    More
  • Marin Cionca4/17/2019 3:48:33 PM

    What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?

    More
  • CIONCA Team Member5/7/2019 7:13:41 PM

    The Federal Circuit Defines a Technological Invention

    More
  • CIONCA Team Member5/20/2019 8:25:57 PM

    PTAB Designates Cases as Precedential

    More
  • Marin Cionca6/11/2019 8:43:17 PM

    Can I Successfully License My Invention?

    More
  • CIONCA Team Member6/27/2019 7:41:52 PM

    Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.

    More
  • CIONCA Team Member7/5/2019 2:22:42 PM

    In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications

    More
  • CIONCA Team Member8/5/2019 2:29:33 PM

    Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation

    More
  • CIONCA Team Member8/19/2019 7:46:17 PM

    In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction

    More
  • CIONCA Team Member9/4/2019 7:20:46 PM

    Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries

    More
  • Marin Cionca9/27/2019 9:32:48 PM

    Can an Online Patent Attorney File My Patent?

    More
  • CIONCA IP10/7/2019 5:44:50 PM

    A Decision in Henny Penny Corporation v. Frymaster LLC

    More
  • CIONCA IP10/16/2019 1:28:13 PM

    To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment

    More
  • 11/15/2019 8:15:11 PM

    Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying

    More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY

CONTACT INFO

About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.

HOME               

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198