Sherwood Sensing Solutions LLC

Patent Trials and Appeals Board

Aug 23, 2021

IPR2020-00752 (P.T.A.B. Aug. 23, 2021)

Trials@uspto.gov Paper 41
571-272-7822 Entered: August 23, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

FRYMASTER, L.L.C. and
HENNY PENNY CORP.,
Petitioner,

v.

SHERWOOD SENSING SOLUTIONS LLC,
Patent Owner.
_______________

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Patent 10,285,539 B2
_______________

Before PHILLIP J. KAUFFMAN, JAMES A. WORTH, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Granting Patent Owner’s Revised Motion to
Amend as to Canceling Claims 1–11
Denying Patent Owner’s Revised Motion to
Amend as to Substituting Claims 12–20
35 U.S.C. § 318(a)
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I. BACKGROUND
Frymaster, L.L.C. and Henny Penny Corporation (collectively,
“Petitioner”) filed a Petition to institute an inter partes review of claims 1–
11 (the “challenged claims”) of U.S. Patent No. 10,285,539 B2 (Ex. 1001,
“the ’539 patent”). Paper 1 (“Pet.”). Sherwood Sensing Solutions LLC
(“Patent Owner”) timely filed a Patent Owner’s Preliminary Response.
Paper 7 (“Prelim. Resp”). Upon review of the arguments and supporting
evidence, we instituted an inter partes review of all claims and grounds
asserted in the Petition. Paper 9 (“Decision on Institution” or “Dec. Inst.”).
After institution, Patent Owner did not file a Patent Owner Response,
but did file a Motion to Amend (Paper 15, “MTA”). Petitioner filed a Reply
in support of the Petition (Paper 25, “Pet. Reply”), and also filed an
opposition to Patent Owner’s Motion to Amend (Paper 24). On March 26,
2021, pursuant to Patent Owner’s request (see MTA 1), we issued
Preliminary Guidance on Patent Owner’s Motion to Amend. Paper 26
(“PG”). Patent Owner then filed a Revised Motion to Amend with proposed
substitute claims 12–20 (Paper 27, “RMTA”), but did not file a Sur-reply to
Petitioner’s Reply. Petitioner opposed Patent Owner’s Revised MTA.
Paper 31 (“RMTA Opp.”). Patent Owner filed a Reply in support of its
Revised Motion to Amend (Paper 35 (“RMTA Reply”)), to which Petitioner
filed a Sur-reply (Paper 36 (“RMTA Sur-reply”)).
Petitioner relies on the declaration testimony of Dr. Kevin M. Keener,
Ph.D., P.E. filed with the Petition (Ex. 1004, “Keener Pet. Decl.”), and with
the Opposition to Patent Owner’s Revised Motion to Amend (Ex. 1037,
“Keener RMTA Decl.”) (including the authorized errata (Ex. 1059)).
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Patent Owner relies on the declaration testimony of Dr. John P.
Abraham, Ph.D. filed with the Revised Motion to Amend (Ex. 2006,
“Abraham RMTA Decl.”), and with the Reply in Support of the Revised
Motion to Amend (Ex. 2007, “Abraham RMTA Reply Decl.”). An oral
argument in this proceeding was held on July 14, 2021, and a copy of the
transcript was entered into the record. Paper 40 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the
reasons below, we grant in part Patent Owner’s Revised Motion to Amend
as to canceling claims 1–11. We deny, however, Patent Owner’s Revised
Motion to Amend as to substituting proposed claims 12–20. We determine
Patent Owner has failed to carry its burden on the statutory and regulatory
requirements as to the Revised Motion to Amend, and, to the extent Patent
Owner did carry its burden, we determine that Petitioner has proven, by a
preponderance of the evidence, the unpatentability of proposed substitute
claims 12–20.
A. Related Proceedings
The parties identify two proceedings in U.S. District Courts involving
the ’539 patent: (1) Sherwood Sensing Solutions LLC v. Frymaster, L.L.C.,
No. 5:19-cv-01351 (W.D. La.), filed October 15, 2019, and (2) Sherwood
Sensing Solutions LLC v. Henny Penny Corp., No. 3:19-cv-00366 (S.D.
Oh.), filed November 19, 2019 (collectively, the “District Court
Litigations”). Paper 22 (Petitioner’s Amended Mandatory Notices) § B;
Paper 13 (Patent Owner’s Amended Mandatory Notices) § 2.
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B. The ’539 Patent
The ’539 patent relates to systems and methods for frying food.
Ex. 1001, code (57), 1:21–23. According to the ’539 patent, “[c]onventional
frying processes are carried out with heated cooking oil, in which food items
are immersed [and] exposed to air,” which “results in deterioration of the
quality and appearance of the oil due to constant oxidation of the oil by air.”
Id. at 1:27–30. With the conventional processes, the ’539 patent states,
“[t]he quality of the fried food may be spoiled by partially oxidized oil, and
consumption of the fried food can pose a health hazard.” Id. at 1:30–33. In
addition, the ’539 patent describes how, in conventional processes, “oil
penetrates into the food items being fried” and how “[r]emoving cooking oil
from the surface of the food items . . . leaves substantial amounts of oil in
the interior of the food items,” which, in turn, “adds to the caloric content of
the food items.” Id. at 1:34–41.
Figure 1 is reproduced below:

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Figure 1 depicts “a frying system in accordance with one
embodiment.” Ex. 1001, 3:7–8. In this embodiment, frying system 1
includes “a frying tank 2 into which food to be fried is inserted” and “vat 3
for heating cooking oil 4 by means of a heating element 5 inside the vat 3.”
Id. at 3:20–23.1 “Under the action of the oil pump 6, oil 4 is pumped out of
the vat 3, and then passes through a segment of a pipe 7 to a pipe 8 before
entering the frying tank 2 through the top of the frying tank 2.” Id. at 3:27–
30. In addition, “[o]il 4 leaves the frying tank 2 from the bottom of the
frying tank 2 through a pipe 9, and then passes through oil filter 10 before
returning to the vat 3.” Id. at 3:30–33. System 1 also includes “vacuum
pump 33 for removing air from the frying tank 2.” Id. at 3:42–44.
Figure 2 is reproduced below:

1 Throughout this Decision, we omit any bolding of reference numerals
in quotations from the ’539 patent and from prior art references.
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Figure 2 depicts frying tank 2 from the system in Figure 1. Ex. 1001,
3:9. Tank 2 includes hinged side door 20, “shown in its open position . . . so
as to expose an interior frying chamber 21.” Id. at 3:46–49. “In use, the
door 20 is closed, as shown in” Figure 1. Id. at 3:49–50. Tank 2 also
includes “cylindrical frying drum 24,” “formed as a wire mesh basket, so
that when the frying chamber 21 is filled with cooking oil 4, the oil contacts
food items 25 located inside the frying drum 24.” Id. at 3:50–54.
In use, after the food items are inserted and door 20 is closed, “oil
pump 6 is activated so as to cause pre-heated cooking oil 4 to flow from the
vat 3 through the pipes 7 and 8 into the interior chamber 21 of the frying
tank 2.” Id. at 3:55–64. “The flow rate of the oil into the interior chamber
under the influence of the oil pump 6 is adjusted to exceed the drainage rate
from the interior chamber 21 via the pipe 9.” Id. at 3:64–67. “The oil level
in the interior chamber 21 thus rises . . . until all air initially present in the
interior chamber 21 has been expelled from the interior chamber 21 and the
interior chamber 21 is completely filled with oil.” Id. at 3:67–4:7; see also
id. at 4:22–25 (“The cooking oil is then confined to a closed system which
prevents avoids exposure of the oil to air so as to prevent oxidation of the oil
and release of oil vapors and cooking odors into the environment.”). The
cooking oil continues to circulate as the food is fried. Id. at 4:25–31. After
the cooking oil is removed from interior chamber 21, vacuum pump 33 is
“activated[,] which removes air from the interior chamber 21[,] causing
excess oil to be leeched out of the fried food items 25.” Id. at 4:47–51.
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Figure 4 is reproduced below:

Figure 4 depicts “a frying system in accordance with another
embodiment of the invention having an open frying tank.” Ex. 1001, 3:13–
14. The depicted system includes “frying tank 42 for frying food items 47”
using basket 48, and also includes “vacuum chamber 44 for deoiling fried
food items.” Id. at 5:42–44. The ’539 patent discloses that “frying tank 42
has an open top, so that cooking oil 46 in the tank is exposed to ambient air,
and hence to atmospheric pressure.” Id. at 5:44–46.
C. Illustrative Claim
Petitioner challenges claims 1–11, of which only claim 1 is
independent. Claim 1 is below, reformatted as compared to the ’539 patent:
1. A system for frying one or more food items,
comprising:
(a) a frying tank having an interior chamber
configured to receive the one or more food items,
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the frying tank including a heater for heating
cooking oil; and
(b) a cooking oil delivery system comprising:
a vat including a substantially hollow
inner chamber for holding cooking oil, and
a pump,
the pump being activated to deliver
cooking oil from the vat to the interior
chamber of the frying tank in an amount that
exceeds the drainage of cooking oil from the
interior chamber or the cooking oil that is
removed from the interior chamber during
the cooking process so as to raise the cooking
oil level to continuously maintain a desired
cooking oil level in the interior chamber of
the frying tank.
Ex. 1001, 6:15–31.
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D. Asserted Grounds of Unpatentability
Petitioner challenges claims 1–11 on the following grounds:
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
1–11 102 Campbell3
1–11 102 Van Den Berg4
1–11 102 Sugimoto5
II. DISCUSSION
A. The Level of Ordinary Skill in the Art
The level of ordinary skill in the art is “a prism or lens” through which
we view the prior art and the claimed invention. Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
hypothetical person presumed to have known the relevant art at the time of
the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
determining the level of ordinary skill in the art, we may consider certain
factors, including the “type of problems encountered in the art; prior art

2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Pub. L.
No. 112-29, §§ 3(b)–3(c), 3(n)(1), 125 Stat. 284, 285–87, 293 (2011).
Because there is no dispute that the challenged claims of the ’539 patent
have an effective filing date before March 16, 2013, we apply the pre-AIA
versions of these statutes.
3 US 5,404,796, issued April 11, 1995 (Ex. 1008, “Campbell”).
4 WO 93/04617, published March 18, 1993 (Ex. 1009, “Van Den
Berg”).
5 Japanese Publication No. 2002-10924 (with translation and translator
declaration), published January 15, 2002 (Ex. 1010 (Japanese version);
Ex. 1011 (translation), “Sugimoto”; Ex. 1012 (translator declaration)).
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solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” Id. (internal quotation marks and citation omitted).
Petitioner contends, with supporting testimony from Dr. Keener, that a
person having ordinary skill in the art “with respect to the ’539 patent has a
Bachelor’s degree in mechanical engineering, biological and agricultural
engineering, systems engineering, food process engineering, or a related
field” and “would have a minimum of one year of work experience in deep
fryer design and development.” Pet. 17 (citing Keener Pet. Decl. ¶ 48). In
the Decision on Institution, we adopted Petitioner’s proposed level of
ordinary skill in the art, stating that it “appear[ed] consistent with the record
at th[at] stage of the proceeding, including the prior art.” Dec. Inst. 9.
In the Reply, Petitioner argues that the level of ordinary skill in the art
is “undisputed” in that Patent Owner did not file a response contesting the
issue. Pet. Reply 2–4. In the Revised Motion to Amend, however, Patent
Owner states a slightly different level of ordinary skill in the art as compared
to that proposed by Petitioner: “a BS degree in mechanical engineering, food
process engineering, or a related field, plus a minimum of one year of
relevant work experience.” RMTA 12 (emphasis added). Specifically,
Patent Owner proposes broadening the required work experience from “one
year of work experience in deep fryer design and development” (Dec.
Inst. 9) to “one year of relevant work experience.” Id. Although Patent
Owner does not expressly define “relevant work experience,” Patent Owner
does state that the “relevant art pertains to heat transfer and fluid flow, and,
in particular, to a system that heats a fluid and delivers the fluid to a tank in
order to fry food.” Id. (emphasis added). Although this statement seems to
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align with the level stated in the Decision on Institution, Patent Owner’s
arguments as to the qualifications of Dr. Abraham indicate that “relevant
work experience” need merely relate to, for example, “analysis and design of
systems implementing pumps, valves, filters, flow sensors, fluid filling
sensors, sensors, and piping systems that convey and heat transfer” rather
than experience in deep fryers design and development. Id. at 13.
For the analysis below, we do not adopt Patent Owner’s broader
statement of the level of ordinary skill in the art at the time of the invention
because Patent Owner’s position is not supported by adequate evidence of
record. See RMTA 12; Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881
F.3d 1354, 1359 (Fed. Cir. 2018) (rejecting attorney argument as to the
alleged understanding of one of skill in the art on an issue when no evidence
was presented). Patent Owner states its broader understanding of the level
of ordinary skill in the art, but does not identify support for that statement,
and then argues that Dr. Abraham qualifies as one of ordinary skill in the art
under that definition. See id. at 12–14. Dr. Abraham, in his declaration filed
with the Revised Motion to Amend, states the opinion “that the relevant art
pertains to heat transfer and fluid flow” (Abraham RMTA Decl. ¶ 24),
restates Patent Owner’s proposal as to the level of ordinary skill in the art,
and then immediately states that he “exceed[s] this level of skill in the art”
(id. ¶ 25). Although Dr. Abraham states that his “understanding and opinion
on the educational background and work experience possessed by a person
of ordinary skill in the art at issue in this IPR proceeding are disclosed in my
curriculum vitae (Ex. 2002),” that exhibit does not address the issue at all.
Id. ¶ 26; see also id. ¶¶ 23–30 (entire testimony regarding “A Person of
Ordinary Skill in the Art (POSITA)”). Accordingly, and because the level
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of ordinary skill in the art proposed by Petitioner and adopted in the
Decision on Institution continues to appear consistent with the complete
record developed at trial, we continue to apply that level of ordinary skill
below. See Dec. Inst. 8–10.
Having maintained the previously adopted level of ordinary skill in
the art, we now turn to Petitioner’s argument that Patent Owner’s declarant,
Dr. Abraham, “has never been a person of ordinary skill in the art, either
now or at the time of the invention.” Pet. Reply 4; see id. at 4–7 (entire
argument on this issue). Specifically, as to the requirement for “a minimum
of one year of work experience in deep fryer design and development,”
Petitioner argues that Dr. Abraham had only nine months of experience in
“‘analysis’ of an already-existing Cargill deep fryer.” Id. at 4–5. According
to Petitioner, Dr. Abraham’s “testimony and opinions should be afforded no
weight in evaluating the merits of Petitioner[’s] anticipatory references”
because he does not qualify as one of ordinary skill in the art. Id. at 5–7
(citing, e.g., Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
1362 n.4 (Fed. Cir. 2008)); see also RMTA Sur-reply 12 (similar argument).
Contrary to Petitioner’s argument, as provided in the Board’s Trial
Practice Guide, “[a] person may not need to be a person of ordinary skill in
the art in order to testify as an expert under Rule 702, but rather must be
‘qualified in the pertinent art.’” TPG 34 (citing Sundance, 550 F.3d at
1363–64). Indeed, failure to possess certain characteristics of the level of
ordinary skill in the art “may not preclude an expert from providing
testimony that is helpful to the Board, so long as the expert’s experience
provides sufficient qualification in the pertinent art.” Id. Here, based on Dr.
Abraham’s experience and qualifications (Ex. 2002), we view him as
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qualified in the pertinent art and consider his testimony helpful in our
analysis whether or not he qualifies as one of ordinary skill in the art at the
time of the invention. For example, as noted by Patent Owner, Dr. Abraham
has a Ph.D. in Mechanical Engineering (Thermal Sciences) and has
extensive teaching and work experience in fluid flow and heat transfer.
RMTA 13–14 (discussing Ex. 2002).
B. Claim Construction
In inter partes reviews, the Board interprets claim language using the
district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2019). Under
that standard, we generally give claim terms their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art at
the time of the invention, in light of the language of the claims, the
specification, and the prosecution history. See Phillips, 415 F.3d at 1313–
14. Although extrinsic evidence, when available, may also be useful when
construing claim terms under this standard, extrinsic evidence should be
considered in the context of the intrinsic evidence. See id. at 1317–19.
Petitioner proposes a construction for the phrase “a frying tank having
an interior chamber” in claim 1 and proposed substitute claim 12 (“the
‘interior chamber’ limitation”). Pet. 10–17. According to Petitioner, the
“[p]lain and ordinary meaning” of that limitation is “a frying tank with an
internal space that is enclosed during cooking.” Id. at 10. In the Decision
on Institution, we preliminarily determined that the “interior chamber” need
not be fully enclosed during cooking. See Dec. Inst. 10–16. Because the
prior art applied below discloses the “interior chamber” limitation under
even Petitioner’s narrower proposed construction, we do not discern a need
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to construe explicitly that limitation or any other claim terms because doing
so would have no effect on the analysis below. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(stating that “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))).
C. Asserted Anticipation of Claims 1–11 by Campbell, by Van Den
Berg, and by Sugimoto
Petitioner asserts that claims 1–11 of the ’539 patent are anticipated
by Campbell, by Van Den Berg, and by Sugimoto, all “under pre-AIA
35 U.S.C. §102(b) and post-AIA 35 U.S.C. §102(a).” Pet. 9–10, 22–90.
Patent Owner did not file a response or sur-reply with arguments addressing
these asserted grounds. Prior to the oral hearing, we understood the Revised
Motion to Amend to be contingent on our determination that claims 1–11 are
unpatentable. Supporting that initial understanding, Patent Owner states that
“each amendment proposes only one substitute claim for each conditionally
canceled claim.” Id. at 2 (emphasis added); see also Lectrosonics, Inc. v.
Zaxcom, Inc., IPR2018-01129, Paper 15 at 3 (PTAB Feb. 25, 2019)
(precedential) (“Lectrosonics, Paper 15”) (“A request to cancel claims will
not be regarded as contingent. However, a request to substitute claims
ordinarily will be treated as contingent. In other words, a proposed
substitute claim normally will be considered only if a preponderance of the
evidence establishes that the original patent claim that it replaces is
unpatentable.” (emphasis added)). Petitioner has the same understanding,
stating that Patent Owner has “has refused to disclaim the Challenged
Claims, which would obviate the need to make any finding regarding their
patentability.” Pet. Reply 1 (emphasis added). During the oral hearing,
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however, Patent Owner made clear that it has unconditionally cancelled
claims 1–11. See Tr. 33:6–34:22. We grant the cancellation of those claims.
Accordingly, we need not address the alleged unpatentability of those
claims.
D. Revised Motion to Amend
Under 35 U.S.C. § 316(d)(1) and 37 C.F.R. § 42.121(a), Patent Owner
moves to substitute cancelled claims 1–11 with proposed claims 12–20.
RMTA 1–3.
1. Proposed Substitute Claims
Patent Owner submits the following proposed substitute independent
claim 12, which corresponds to independent claim 1 (with added material
underlined, and deleted material bracketed):
12. [12A] A system for frying one or more food
items, comprising:
[12B] (a) a frying tank having an interior
chamber configured to receive the one or more food
items, [12C] the frying tank including a heater for
heating cooking oil, [12D] wherein the frying tank
is configured to receive a fry basket containing the
one or more food items with the fry basket held at a
predetermined position within the frying tank;
[12E] (b) a cooking oil delivery system
comprising:
[12F] a vat including a substantially
hollow inner chamber for holding cooking
oil, [12G] wherein the substantially hollow
inner chamber of the vat does not enclose a
filter for filtering the cooking oil in the
cooking delivery system;
[12H] a pump,
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[12I] the pump being activated to
deliver cooking oil from the vat to the interior
chamber of the frying tank in an amount that
exceeds the drainage of cooking oil from the
interior chamber or the cooking oil that is
removed from the interior chamber during
the cooking process so as to raise the cooking
oil level to continuously maintain a
substantially constant [desired] cooking oil
level in the interior chamber of the frying
tank.
RMTA 28 (Claims App.); RMTA Opp. xii–xiii (providing designations).6
Proposed substitute claims 13–19 and 20 correspond to cancelled claims 2–8
and 11, respectively, with changes only to the claim number from which the
substitute claims depend. See RMTA 29–31 (Claims App.). Claims 9 and
10 are cancelled with no proposed substitute claims. Id. at 30–31.
2. Legal Standard
In an inter partes review, amended claims are not added to a patent as
a matter of right; rather, they must be proposed as a part of a motion to
amend. 35 U.S.C. § 316(d). In reviewing a motion to amend, the Board
assesses the patentability of the proposed substitute claims “without placing
the burden of persuasion on the patent owner.” Aqua Prods., Inc. v. Matal,
872 F.3d 1290, 1328 (Fed. Cir. 2017) (en banc); see Lectrosonics, Paper 15
at 3‒4.
Notwithstanding the foregoing, a patent owner’s proposed substitute
claims must meet the statutory requirements of 35 U.S.C. § 316(d) and the
procedural requirements of 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4–

6 We adopt Petitioner’s designations for the elements of proposed
substitute claim 12. We apply these designations below.
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8. In particular, a patent owner must demonstrate: (1) the amendment
proposes a reasonable number of substitute claims; (2) the proposed claims
are supported in the original disclosure (and any earlier filed disclosure for
which the benefit of a filing date is sought); (3) the amendment responds to a
ground of unpatentability involved in the trial; and (4) the amendment does
not seek to enlarge the scope of the claims of the patent or introduce new
subject matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121.
3. Claim Construction
Neither Patent Owner nor Petitioner proposes that any language in the
amendments in the proposed substitute claims needs express construction.
See RMTA; RMTA Reply; RMTA Opp.; RMTA Sur-reply. We agree.
4. Statutory and Regulatory Requirements
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” Lectrosonics, Paper 15 at 4.
a. Reasonable Number of Substitute Claims
First, we consider whether the Revised Motion to Amend proposes a
reasonable number of substitute claims. See 35 U.S.C. § 316(d)(1)(B). We
apply “a rebuttable presumption that a reasonable number of substitute
claims per challenged claim is one (1) substitute claim.” Lectrosonics,
Paper 15 at 4–5 (citing 37 C.F.R. § 42.121(a)(3)). Patent Owner proposes
nine substitute claims for eleven challenged claims. RMTA 1–5. Thus,
Patent Owner has proposed a reasonable number of substitute claims.
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b. Responsive to a Ground of Unpatentability
Second, we consider whether the proposed substitute claims respond
to a ground of unpatentability involved in this trial. Lectrosonics, Paper 15
at 5–6. Proposed substitute claim 12 amends the language of claim 1 to
recite additional features of the system for frying food, and Patent Owner
asserts that the proposed substitute claims are patentable over the instituted
grounds and references at issue in this proceeding, based on the amended
language. RMTA 17–24. We conclude that the proposed substitute claims
are responsive to grounds of unpatentability involved in this trial because
Patent Owner adds limitations in a manner intended to address the prior art
cited by Petitioner in relation to the originally challenged claims.
c. Scope of the Substitute Claims
Third, we consider the scope of the substitute claims, as “[a] motion to
amend may not present substitute claims that enlarge the scope of the claims
of the challenged patent or introduce new subject matter.” Lectrosonics,
Paper 15 at 6 (citing 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii)).
We first address the alleged enlargement of the scope of the claims.
(1) Allegedly Enlarged Claim Scope
“A patent owner may not seek to broaden a challenged claim in any
respect that enlarges the scope of the claims of the patent, for example, in
the name of responding to an alleged ground of unpatentability.”
Lectrosonics, Paper 15 at 6 (emphasis added). “Likewise, a proposed
substitute claim may not remove a feature of the claim in a manner that
broadens the scope of the claims of the challenged patent.” Id.
In the context of proposed substitute claim 12, Patent Owner seeks to
revise the requirement “to continuously maintain a desired cooking oil
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level” to the requirement “to continuously maintain a substantially constant
cooking oil level.” RMTA 28 (Claims App.) (emphasis added). Patent
Owner states that this revision “is made for the purpose of clarifying the
language in response to the Board’s Preliminary Guidance regarding the
patentability of this limitation under 35 U.S.C. § 112 and to distinguish from
prior art of record in this proceeding” and “is not intended to, and indeed
does not, enlarge the scope of the claim.” Id. at 4.
Petitioner argues that this proposed revision enlarges the scope of the
claims because “a fryer that maintains a ‘substantially constant’ oil level
covers fryers not previously covered when the claim recited a ‘desired’ oil
level” in that “[t]he substitute claims now cover a fryer maintaining an oil
level that is ‘undesired,’ which does occur, such as an oil level that would (i)
not contact the food, or (ii) only partially submerge food like French fries,
fish, and chicken during cooking, so long as the oil level stays ‘substantially
constant.’” RMTA Opp. 9 (citing Keener RMTA Decl. ¶¶ 91–93).
We are persuaded by Patent Owner’s argument that the revision at
issue does not enlarge the scope of the claims. Although the original term
“desired” likely lacks “objective boundaries” for the reasons stated in the
Preliminary Guidance (PG 10–11), Petitioner’s argument assumes as clear
the scope of the opposite term: “undesired.” See RMTA Opp. 9. For similar
reasons, the scope of that term is equally unclear. We view Dr. Abraham’s
statement that an oil level “such that the food is partially submerged” is “not
a desired oil level” as merely indicating that, during normal operation, the
food is entirely submerged in oil, rather than indicating a clear scope as to
the terms “desired” versus “undesired.” See Ex. 1047 (Deposition of Dr.
Abraham), 170:6–9, cited at RMTA Opp. 9. In other words, with little
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clarity as to the scope of the term “desired,” we do not agree with
Petitioner’s implied understanding of that term—i.e., as limited to a level
that provides optimal operation of the system. Accordingly, we do not view
proposed substitute claim 12 as enlarging the scope of claim 1 by replacing
“desired” with “substantially constant.”
(2) Alleged New Matter
New matter is any addition to the claims without support in the
original disclosure. See TurboCare Div. of Demag Delaval Turbomach. v.
Gen. Elec. Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001) (“When [an] applicant
adds a claim . . . the new claim[] . . . must find support in the original
specification.”). The test for adequate written description support is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). In the Revised Motion to
Amend, Patent Owner provides a discussion and claim charts identifying
alleged support for each limitation in the proposed substitute claims. See
RMTA 5–12. Patent Owner argues that proposed substitute claim 12 is
directed at the Figure 4 embodiment and that that embodiment would be
understood by one of ordinary skill in the art as comprising all of the
elements claimed even though some of the claimed elements are not
expressly shown in that embodiment. Id. at 16–17.
(a) “Substantially Constant Cooking Oil
Level”
Petitioner argues that the original disclosure lacks adequate support
for the full scope of the requirement, in element 12I, to “continuously
maintain a substantially constant cooking oil level.” See RMTA Opp. 6–7
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(citing LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1346
(Fed. Cir. 2005) (stating that “a patentee cannot always satisfy the
requirements of section 112, in supporting expansive claim language, merely
by clearly describing one embodiment of the thing claimed”)). Specifically,
Petitioner argues that “[t]he only disclosures identified by [Patent Owner]—
indeed the only disclosure in the patent—regarding maintaining an oil level
relate to a fryer that ‘completely fill[s]’ the fryer tank.” RMTA Opp. 6–7
(citing RMTA 9–10; Ex. 1001, 2:40–48, 2:55–59, 3:58–4:7, 4:19–21).
Petitioner contends that “[t]he ’539 patent does not describe a fryer that
maintains a constant oil level at any other level.” Id. at 7 (citing Keener
RMTA Decl. ¶¶ 112–113). In contrast, Petitioner asserts that “[a]ll
substitute claims are far broader than the described fryer that completely fills
the fryer tank because they purport to cover a fryer that maintains cooking
oil at any level, so long as that level remains ‘substantially constant.’” Id.
For the reasons below, Patent Owner has not shown adequate support
for the full scope of proposed substitute claim 12. Although “[a] claim will
not be invalidated on section 112 grounds simply because the embodiments
of the specification do not contain examples explicitly covering the full
scope of the claim language,” LizardTech, 424 F.3d at 1345, “the case law
does ‘not compel the conclusion that a description of a species always
constitutes a description of a genus of which it is a part.’” Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (quoting
Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.
Cir. 1997)). “[A] broad claim is invalid when the entirety of the
specification clearly indicates that the invention is of a much narrower
scope.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed.
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Cir. 2003) (quoting Cooper Cameron Corp. v. Kvaerner Oilfield Prod., Inc.,
291 F.3d 1317, 1323 (Fed. Cir. 2002)).
The facts here are similar to those in Gentry Gallery, in which “the
original disclosure clearly identifie[d] the console as the only possible
location for the controls,” 134 F.3d at 1479, even though certain claims did
not limit the location of the controls to the console, id. at 1475–76. In that
case, the court determined that the disclosure did not “support claims in
which the location of the recliner controls is other than on the console.” Id.
at 1479; see also id. (“It is a truism that a claim need not be limited to a
preferred embodiment. However, in a given case, the scope of the right to
exclude may be limited by a narrow disclosure.”).
Similarly, here, as argued by Petitioner, the written description
identified by Patent Owner does not support claims in which the
“substantially constant cooking oil level” is other than a level with the
“interior chamber” completely full. Specifically, as argued by Petitioner
(RMTA Opp. 6–7), each textual disclosure identified in the Revised Motion
to Amend, when viewed in context, discloses the process of filling the
interior chamber of the tank until it is completely full. See RMTA 9–10
(citing Ex. 1001, code (57), 2:46–48, 2:58–59, 3:25–30, 3:60–4:2,7 4:19–28;
Ex. 1002 at 12–15 (¶¶ 12, 15, 21, 24, 26, 28); Ex. 2003, code (57), 3:17–19,
3:28–29, 4:26–5:2, 5:25–6:1, 6:15–17); see also RMTA Opp. 6–7 (citing
RMTA 9–10; Ex. 1001, 2:40–48, 2:55–59, 3:58–4:7, 4:19–21). Patent

7 Patent Owner cites this passage but notably omits the next sentence,
cited by Petitioner, which describes the filling process as continuing “until
all air initially present in the interior chamber 21 has been expelled from the
interior chamber 21 and the interior chamber 21 is completely filled with
oil.” Ex. 1001, 4:4–7 (emphasis added); see also Ex. 2003, 6:3–6 (same).
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Owner only cites to Figures 1 and 3, not Figure 4, in support of this
requirement. See RMTA 9–10. We view as untimely Patent Owner’s
efforts in the Reply in support of the Revised Motion to Amend to rely on
the Figure 4 embodiment for alleged written description support. See id. at
5–6. Moreover, as acknowledged by Patent Owner in the Reply in support
of the Revised Motion to Amend, the Figure 1 and 3 embodiments show a
level that is “completely full.” RMTA Reply 5.
In addition, even if we were to consider the arguments as to the Figure
4 embodiment, Patent Owner provides no evidence to support the assertion
that one of ordinary skill in the art would have understood that embodiment
as depicting a system able to maintain a cooking oil level other than
“completely full”—including one that is “sufficient to cover the food items
within the fry basket.” RMTA Reply 5; Elbit Sys., 881 F.3d at 1359
(rejecting attorney argument as to the alleged understanding of one of skill
in the art on an issue when no evidence was presented). Notably, the text
accompanying Figure 4 does not discuss maintaining the oil level at all,
much less maintaining it at an oil level other than full. See Ex. 1001, 5:41–
6:13. Further supporting that the applicant was not in possession of
maintaining an oil level less than full, we note that the only original claim
recited a requirement to “continuously completely fill the interior chamber
with cooking oil.” Ex. 1002 at 18; see also In re Myers, 410 F.2d 420, 427
(CCPA 1969) (affirming new matter rejection of claims specifically
claiming cobalt and nickel binders where original disclosure, including
original claims, did not specifically identify that these two types of metal
could be used but only broadly disclosed a class of operable metals).
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Patent Owner also provides no evidence to support the related
assertion that “[c]ontrol of the oil level in an open top fryer at a substantially
constant level is readily achieved, even without the use of oil level sensors,
through selective placement of the port for the exhaust pipe draining the
circulating cooking oil from the frying tank, which [one of ordinary skill in
the art] could implement.” RMTA Reply 6.
In the claim chart section in the Revised Motion to Amend addressing
the alleged support for the claim language at issue, Patent Owner cites to one
paragraph of Dr. Abraham’s declaration filed with the Revised Motion to
Amend. RMTA 9–10 (citing Ex. 2006 ¶ 64). In that paragraph,
Dr. Abraham states that “[d]uring operation, the pump may run continuously
to maintain the oil level in the frying tank at a substantially constant level,
which may be completely full for closed frying tanks or at a level above the
position of food inserted into the frying basket inserted into the frying tank
(42) for open top systems.” Ex. 2006 ¶ 64. We are not persuaded by this
statement, however, as Dr. Abraham does not identify support in the original
disclosure for that understanding. For these reasons, we determine, by a
preponderance of the evidence, that Patent Owner has not shown adequate
support for the full scope of proposed substitute claim 12.
(b) “Vat Does not Enclose a Filter”
Petitioner argues that the original disclosure lacks adequate support
for element 12G, which recites: “wherein the substantially hollow inner
chamber of the vat does not enclose a filter for filtering the cooking oil in the
cooking delivery system.” See RMTA Opp. 7–8. Petitioner argues that the
Specification does not support this limitation and that Patent Owner’s
“identified support is insufficient.” RMTA Opp. 7. Petitioner states, “[o]n
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the contrary, as the Board already observed, Figs. 1, 3 show filter 10 at least
partially within the vat 3, ([Dec. Inst.] 28; Keener [RMTA Decl. ¶¶] 118–
19), meaning that [Patent Owner] seeks claims that would exclude its
embodiments and introduce new matter.” Id. at 8.
In the Revised Motion to Amend, Patent Owner cites alleged support
for elements 12F and 12G together. See RMTA 8–9. For the reasons below,
we determine that Patent Owner has adequately shown support for element
12G, at least in Figures 1 and 3 and the disclosure of oil flow “through the
oil filter 10 and into the oil vat 3.” Ex. 1001, 4:36–41, Figs. 1 & 3; Ex. 1002
at 15 (¶ 28), Figs. 1 & 3; Ex. 2003, 6:27–7:1, Figs. 1 & 3, all cited at
RMTA 8. As an initial matter, although the parties do not expressly
construe the term “enclose” in element 12G, we understand that term to
mean surrounded on all sides—i.e., fully within. See, e.g., Dec. Inst. 15.8
Accordingly, Petitioner’s admission that Figures 1 and 3 show filter 10 as at
most “partially within” vat 3 supports that filter 10 is not fully within vat 3,
as required. Cf. RMTA Opp. 7. Dr. Keener makes the same admission,
stating that one of ordinary skill in the art would “understand that at least a
portion of the filter 10 is also within the vat.” Kenner RMTA Decl. ¶ 119.
Here, Figures 1 and 3 strongly support Patent Owner’s position. See Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir 1991) (“[U]nder
proper circumstances, drawings alone may provide a ‘written description’ of
an invention as required by § 112.”).

8 Unlike in the context of the meaning of “open top” in claim 4, in the
context of element 12G, the alternative meaning of “enclose” as merely
surrounded by a “wall, fence, etc.” does not appear applicable, and Petitioner
does not assert that it is. See Dec. Inst. 15.
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Petitioner also argues that element 12G includes a “negative
limitation, which requires ‘the specification [to] describe[] a reason to
exclude the relevant limitation.’” RMTA Opp. 7–8 (quoting Inphi Corp. v.
Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir. 2015)). According to
Petitioner, “[t]hat is lacking.” Id. at 8. The Inphi decision cited by
Petitioner does not hold that a negative limitation requires a textual
explanation of a reason to exclude the relevant aspect. In fact, the Federal
Circuit squarely addressed that and held the opposite, stating that a textual
explanation is merely one possibility of showing support for a negative
limitation:
The Santarus court found that the patent-at-issue’s express
recitation of (dis)advantages was sufficient to provide a reason
to exclude the claim limitation at issue. That court did not hold,
however, that such recitations were required to satisfy the written
description requirements of § 112, paragraph 1 for negative
claim limitations. Nor do we see any reason to now articulate a
new and heightened standard for negative claim limitations.
Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1356 (Fed. Cir. 2015) (discussing
Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344 (Fed. Cir. 2012)).
Moreover, the Inphi decision indicates that reliance, at least in part, on a
drawing may provide adequate support for a negative limitation. See id. at
1357 (“The Board’s review of the specification makes it clear that there was
substantial evidence that Netlist possessed the negative claim limitation as of
the filing date, as is evidenced through the Board’s reliance on the JEDEC
standard, Table 2, and other various passages in the specification, including
Figure 9A.” (emphasis added)). For these reasons, we determine, by a
preponderance of the evidence, that Patent Owner has identified adequate
support for element 12G in proposed substitute claim 12.
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(c) Allegedly Combining Embodiments
Petitioner argues that the proposed substitute claims introduce new
matter because proposed substitute claim 12 combines three distinct
embodiments disclosed in the ’539 patent. See RMTA Opp. 2–6; RMTA
Sur-reply 3–4. Patent Owner opposes. See RMTA 15–16; RMTA Reply 1–
5. Because we have already determined that Patent Owner has not satisfied
the statutory and regulatory requirement as to the Revised Motion to Amend,
we do not address this additional basis. See SAS Inst. v. Iancu, 138 S. Ct.
1348, 1359 (2018) (holding that a petitioner “is entitled to a final written
decision addressing all of the claims it has challenged”); Boston Sci. Scimed,
Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020)
(nonprecedential) (stating that the “Board need not address issues that are
not necessary to the resolution of the proceeding,” such as “alternative
arguments with respect to claims [the Board] found unpatentable on other
grounds”).
5. Burden on Petitioner to Prove Unpatentability of Proposed
Substitute Claims 12–20
For the reasons above, Patent Owner’s Revised Motion to Amend
does not meet the requirements of 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121. Regardless, to provide a full record on the issues, we analyze
below (see § II.D.5–8) whether Petitioner has met its burden of persuasion
as to the alleged unpatentability of proposed substitute claims 12–20. See
Rules of Practice To Allocate the Burden of Persuasion on Motions To
Amend in Trial Proceedings Before the Patent Trial and Appeal Board,
85 Fed. Reg. 82,923, 82,924, 82,935 (Dec. 21, 2020) (codified at 37 C.F.R.
pt. 42) (stating that “[a] petitioner bears the burden of persuasion to show, by
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a preponderance of the evidence, that any proposed substitute claims are
unpatentable” as to any motion to amend filed on or after January 20, 2021).
6. Asserted Indefiniteness of Proposed Substitute Claims 12–20
Petitioner argues that aspects of element 12I of proposed substitute
claim 12 renders all the proposed substitute claims indefinite. See RMTA
Opp. 24–25. Specifically, Petitioner states that “[a]ll substitute claims
require a pump to ‘deliver cooking oil . . . in an amount that exceeds’ any
oil loss from drainage or absorption during cooking so as to ‘raise the
cooking oil level’ but also ‘continuously maintain a substantially constant
cooking oil level’ in the frying tank.” Id. at 24. First, according to
Petitioner, “[t]here are no objective boundaries for the amount of oil
delivered by the pump so that the oil level both rises and also remains
‘substantially constant.’” Id. (citing Keener RMTA Decl. ¶¶ 518–523). In
support of the alleged “nonsensical” nature of this language, Petitioner
highlights an argument by Patent Owner in the context of the Revised
Motion to Amend that the “gradual and continuous rise and fall of oil level
12 in Boots does not contemplate maintaining the oil level in the frying tank
at a constant level.” Id. at 24–25 (citing Abraham RMTA Decl. ¶ 94, cited
at RMTA 24).
Second, Petitioner argues “there are no objective boundaries for the
term ‘continuous[]’” in the language at issue in that neither the claims nor
the Specification “provides an objective time interval over which the oil
level must be uninterrupted, leaving [one of ordinary skill in the art] asking
whether the level must be uninterrupted for seconds, minutes, hours, days, or
some other timeframe, for example.” Pet. Reply 25 (citing Keener RMTA
Decl. ¶ 526). As noted by Petitioner, Patent Owner does not address the
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indefiniteness arguments in the Reply in support of the Revised Motion to
Amend. See RMTA Sur-reply 2. Regardless, for the reasons below, we
determine that Petitioner has not demonstrated, by a preponderance of the
evidence, that proposed substitute claim 12 is indefinite.
To satisfy the definiteness requirement of § 112, a patent’s claims
must, when “viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the invention with
reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
898, 910 (2014); see also Memorandum from Andrei Iancu, Andrew
Hirshfield, and Scott R. Boalick to Members of the Patent Trial and Appeal
Board (Jan. 6, 2021), available at https://www.uspto.gov/sites/default/files/
documents/IndefinitenessMemo.pdf (applying Nautilus in the context of
inter partes reviews).
Although a petitioner cannot assert indefiniteness of the original
claims in the context of a petition (35 U.S.C. § 311(b)), a petitioner may
assert indefiniteness of substitute claims proposed in a motion to amend.
See Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948, Paper 34
at 5 (PTAB Jan. 19, 2019) (precedential) (“In contrast to § 311(b), the
statutory provision providing a right to a motion to amend, 35 U.S.C.
§ 316(d), does not prevent us from considering unpatentability under
sections other than § 102 and § 103 with respect to substitute claims.”), aff’d
Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295 (Fed. Cir. 2020); see also
TPG 73 (discussing the precedential decision in Amazon.com and stating
that, in opposition to a motion to amend, a “petitioner may raise, and the
Board may consider, other grounds of unpatentability, including 35 U.S.C.
§§ 101 and 112, as to proposed substitute claims”).
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As to the first argument, we are not persuaded that the proposed
substitute claims are rendered indefinite based on the alleged conflicting
requirements for a pump to simultaneously “raise the cooking oil level”
while also “continuously maintain[ing] a substantially constant cooking oil
level.” See RMTA Opp. 24–25. Underlying Petitioner’s argument is the
assumption that the recited “cooking oil level” is a single numerical value,
rather than a range (i.e., a maximum and minimum level). See, e.g., RMTA
Opp. 25 (stating that the claim language at issue “would require the pump to
have two opposing effects on the cooking oil level: both raising it and
keeping it constant” (citing Keener RMTA Decl. ¶ 521)). In the Decision on
Institution, we preliminarily rejected a similar argument by Patent Owner,
stating that we discern no reason to interpret “cooking oil level” so narrowly.
See Dec. Inst. 32 n.10. For example, if the “cooking oil level” was a range
and the specific numerical quantity was decreasing and near the lower end of
the range, the “pump” may need to, as recited in element 12I, “raise the
cooking oil level to continuously maintain a substantially constant cooking
oil level in the interior chamber of the frying tank.”
Turning to the second argument, we are not persuaded that the term
“continuously” in element 12I renders indefinite the proposed substitute
claims. Instead, we view “continuously” as essentially the same as
Petitioner: “uninterrupted in time.” RMTA Opp. 25 (citing Exs. 1056–1058;
Keener RMTA Decl. ¶ 524). With that understanding, the system of
proposed substitute claim 12 must include a “pump being activated” to
“maintain a substantially constant cooking oil in the interior chamber” at all
times during operation of the system. Contrary to Petitioner’s argument, this
does not conflict with the possibility of the “pump” turning off and on—i.e.,
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not operating all the time. See, e.g., RMTA Opp. 25 (“But far from a system
where the oil level is uninterrupted in time, the ’539 patent discloses a
system where the oil level fluctuates because ‘the [fryer] vessel is filled with
oil, and then it’s emptied of oil.’” (quoting Ex. 1047, 157:17–21) (citing id.
at 152:24–157:16). Indeed, as discussed above in this section, when viewing
the “cooking oil level” as a range, the “level” may be “continuously
maintain[ed]” even if the “pump” is operated intermittently. For these
reasons, Petitioner has not demonstrated, by a preponderance of the
evidence, that proposed substitute claim 12 is indefinite.
7. Asserted Lack of Enablement of Proposed
Substitute Claims 12–20
Petitioner argues that independent proposed substitute claim 12 lacks
enablement for its full scope, thereby rendering unpatentable all of the
proposed substitute claims. See RMTA Opp. 23–24. Specifically, Petitioner
argues that the “substitute claims here are not enabled because they purport
to cover fryers that the specification provides absolutely no guidance as to
how to make or use” in that the “substitute claims cover a cooking oil level
continuously maintained at any level, as long as that level remains
‘substantially constant.’” Id. at 23 (citing Keener RMTA Decl. ¶¶ 511–517).
According to Petitioner,
[t]he amount of oil that must be delivered by the pump to
“continuously maintain a substantially constant cooking oil
level” depends on a number of factors, such as the size of the
particular system and fryer vat at issue, the food type, volume of
food being fried, food temperature, the volume of oil in use, and
the oil temperature.
RMTA Opp. 23–24 (citing Keener RMTA Decl. ¶ 516). Petitioner contends
that one of ordinary skill in the art “cannot reasonably predict how these
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factors will influence the amount of oil needed across the full scope of the
claims without undue experimentation.” Id. at 24 (citing Keener RMTA
Decl. ¶ 516). As noted by Petitioner, Patent Owner does not address the
enablement arguments in the Reply in support of the Revised Motion to
Amend. See RMTA Sur-reply 2.
“To be enabling, the specification of a patent must teach those skilled
in the art how to make and use the full scope of the claimed invention
without undue experimentation.” Trs. of Boston Univ. v. Everlight Elecs.
Co., 896 F.3d 1357, 1362 (Fed. Cir. 2018). We consider certain factors to
determine whether a disclosure satisfies the enablement requirement,
including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988); see also Metall Zug AG v.
Carl Zeiss Meditec AG, IPR2020-00300, Paper 34 at 56–64 (PTAB June 17,
2021) (applying In re Wands to assess whether proposed substitute claims in
a revised motion to amend in inter partes review lack enablement).
We are persuaded by Petitioner’s argument that proposed substitute
claim 12 lacks enablement. As argued by Petitioner, the disclosures lack
direction or guidance (factor 2 above) and lack working examples (factor 3
above) as to how to continuously maintain a cooking oil level at least as to a
level other than completely full. See RMTA Opp. 23–24. This is supported
by the testimony of Dr. Keener, who correctly states (1) that “[t]he only
disclosure . . . about maintaining an oil level in the frying tank relates to the
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tank being completely filled without even the presence of air” (Keener
RMTA Decl. ¶ 513) and (2) that “[t]he specification provides no guidance or
working examples about ways to sense the cooking oil level, how to
determine when to add oil to the frying tank, and how to determine [how]
much oil to add to the frying tank, how often to add oil” (Keener RMTA
Decl. ¶ 515). Moreover, for the same reasons discussed above (see
§ II.D.4.c.2.a), the scope of proposed substitute claim 12 is broader than the
disclosures and broader than claim 1 such that factor 8 weighs in favor of
lack of enablement.
We are less persuaded that the other Wands factors strongly support
lack of enablement. Although the factors listed by Petitioner and Dr. Keener
do appear relevant to continuously maintaining a cooking oil level, we are
not entirely persuaded of their unpredictability (factor 7) or that a high level
of experimentation is needed (factor 1) given the relatively developed state
of the art as to teachings addressing this claim language (factor 59), the
relatively low level of ordinary skill in the art (factor 610), and the relatively
simple nature of the claimed mechanical invention (factor 4). See Keener
RMTA Decl. ¶ 516 (addressing these factors). Regardless, because the
evidence as to factors 2, 3, and 8 weigh strongly in favor of Petitioner’s
position, we determine that Petitioner has demonstrated by a preponderance
of the evidence that proposed substitute claim 12 lacks enablement as to its
full scope.

9 See infra § II.D.8.b.9 (addressing this limitation in the context of
proposed substitute claim 12).
10 See supra § II.A.
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8. Asserted Anticipation of Proposed Substitute Claims 12–20
by Van Den Berg and Asserted Obviousness of Proposed
Substitute Claims 12–20 Based on Van Den Berg, Either
Alone or in Combination with Lavi
Petitioner contends that Van Den Berg anticipates proposed substitute
claims 12–20, or, in the alternative, renders obvious proposed substitute
claims 12–20, either alone or in combination with WO 2003/086156 A3 to
Lavi (Ex. 1036). RMTA Opp. 10–15; RMTA Sur-reply 5–6. Petitioner
states that “[a]ll of the limitations in substitute claims 12–20 that are
unchanged by the amendments are disclosed for the reasons presented in the
Petition.” RMTA Opp. 10 (citing Pet. § IX.B; Keener RMTA Decl. ¶¶ 149–
279). We first summarize aspects of Van Den Berg.
a. Van Den Berg
Van Den Berg discloses “deep-frying device having a closed system,
wherein the frying fat or oil can be pumped round continuously from a
feedstock reservoir” “to [a] deep-frying vessel . . . and back to the feedstock
reservoir.” Ex. 1009, Abstract. Figures 1 and 2 are below:

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Figure 1 is a side view of a deep-frying device and Figure 2 is a front
view of the same. Ex. 1009, 6:29–31. These Figures show, “at the top, a
deep-frying vessel 2 provided with a heating element, and, underneath, a
feedstock reservoir 3.” Id. at 7:1–3. In addition, “pump 4’ driven by a
motor 4 is located in the feedstock reservoir 3” and “introduces melted fat or
oil, via the pipe 5, into the deep-frying vessel 2.” Id. at 7:3–5.
Van Den Berg discloses that “[t]he level in the deep-frying vessel can
be controlled by a level switch which cooperates, for example, with a valve
7 located between pipes 6 and 8, through which fat or oil can flow from the
vessel,” and also discloses that “[t]he valve 7 can be such that, whether in
conjunction with a level switch or not, it regulates the flow quantity so as to
keep the level in the deep-frying vessel constant.” Ex. 1009, 7:8–12, 7:32–
34. Via pipes 6 and 8, contaminated oil reaches centrifuge 9, where the oil
is cleaned before being returned to feedstock reservoir 3 via discharge pipe
13. Id. at 7:16–20.
b. Proposed Substitute Claim 12
(1) Element 12A
In claim language maintained from the preamble of claim 1, proposed
substitute claim 12 recites “[a] system for frying one or more food items,
comprising.” RMTA 28 (Claims App.). To address this claim language,
Petitioner states that “Van Den Berg discloses a ‘deep-frying device.’” Pet.
46 (citing Ex. 1009, code (57), 1:1, Fig. 1). We find, based on the complete
record, that, to the extent this claim language is limiting, Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this aspect. Patent Owner does not present arguments for this
claim language.
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(2) Element 12B
In claim language maintained from claim 1, proposed substitute claim
12 recites “a frying tank having an interior chamber configured to receive
the one or more food items.” RMTA 28 (Claims App.). To address this
claim language, Petitioner identifies “deep-frying vessel 2” in Figure 1 of
Van Den Berg as the “frying tank” and states that “the ‘deep-frying vessel 2’
with the ‘cover 15’ has an internal space that is enclosed during cooking.”
Pet. 46 (citing Ex. 1009, 7:39–8:1 (“Finally, the deep-frying vessel can be
provided with a cover 15.” (emphasis added)), Fig. 1; Keener Pet. Decl.
¶ 218). As noted by Petitioner, due to the optional presence of cover 15,
Van Den Berg would satisfy this limitation under even Petitioner’s narrower
proposed construction. Pet. 47. We find, based on the complete record, that
Petitioner has demonstrated by a preponderance of the evidence that Van
Den Berg discloses this limitation. Patent Owner does not present
arguments for this limitation.
(3) Element 12C
In claim language maintained from claim 1, proposed substitute claim
12 recites “the frying tank including a heater for heating cooking oil.”
RMTA 28 (Claims App.). To address this claim language, Petitioner
identifies heating element 16 and states that Van Den Berg “discloses ‘the
heating element 16 in the deep-frying vessel comes into operation and
ensures that fat . . . in the vessel is heated.’” Pet. 47 (citing Ex. 1009, 8:2–
7, 4:39–5:2; Keener Pet. Decl. ¶¶ 222–223). We find, based on the complete
record, that Petitioner has demonstrated by a preponderance of the evidence
that Van Den Berg discloses this limitation. Patent Owner does not present
arguments for this limitation.
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(4) Element 12D
In element 12D, entirely added in the context of the Revised Motion
to Amend, proposed substitute claim 12 recites: “wherein the frying tank is
configured to receive a fry basket containing the one or more food items
with the fry basket held at a predetermined position within the frying tank.”
RMTA 28 (Claims App.). In the alternative to the alleged disclosure of this
element by Van Den Berg alone, Petitioner argues that this limitation would
have been obvious based on Van Den Berg alone, or in combination with
Lavi. See RMTA Opp. 11–14. Specifically, Petitioner states that “[f]ry
baskets held at a predetermined position were known before the ’539 patent,
and [Dr. Abraham] admitted the same” and states that Lavi is one example.
See id. at 12 (citing Keener RMTA Decl. ¶¶135–146 (citing Exs. 1036,
1038–1043); Ex. 1047, 142:5–143:4). As to Lavi, Petitioner focuses on the
embodiment in Figure 4, identifying wire basket 42 and noting the
disclosure that upper hook 45 is used to “immerse the wire basket 42, and
the potato sticks therein.” Id. (quoting Ex. 1036, 7:3–6) (citing Ex. 1036,
6:15–21, Fig. 4; Keener RMTA Decl. ¶ 172). According to Petitioner,
“Lavi’s ‘wire basket 42’ and ‘upper hook 45’ disclose a fry basket held at a
predetermined position.” Id. (citing Keener RMTA Decl. ¶¶ 170–173).
Petitioner provides two alternative motivations to combine Van Den
Berg with a fry basket as disclosed in Lavi. RMTA Opp. 12–14. First,
Petitioner highlights disclosures in Van Den Berg as to frying “various types
of products” including “fish” and contends that “the prior art recommended
using a basket for frying fish.” Id. at 12–13 (quoting Ex. 1009, 6:10–19)
(citing Ex. 1046 at 8; Ex. 1047, 188:12–16). According to Petitioner,
“[b]ecause Van Den Berg would be used to fry smaller food products and
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fish, [one of ordinary skill in the art] would have been motivated to combine
a basket held at a predetermined position with Van Den Berg.” Id. at 13
(citing Keener RMTA Decl. ¶ 176).
Second, Petitioner asserts that one of ordinary skill in the art “would
also have understood that baskets provide, in general, an easier way to insert,
control, and remove food in a fryer” in that “[a] basket keeps food from
sinking to the bottom of the frying tank, and prevents the food from
contacting the sides of the frying tank,” which would “keep the frying tank
clean longer.” RMTA Opp. 13 (citing Keener RMTA Decl. ¶ 177).
Petitioner also contends there would have been a reasonable expectation of
success in the proposed modification. See id. at 14 (citing Keener RMTA
Decl. ¶¶ 164–169, 179). We focus the discussion below on the proposed
combination of Van Den Berg and Lavi.
Patent Owner first argues that Lavi is nonanalogous art and thus
would not have been considered by one of ordinary skill in the art to
combine with Van Den Berg. See RMTA Reply 6–8. Specifically, Patent
Owner contends that “Lavi is not implemented with an oil delivery,
circulation, or replenishment system” but, instead, “the frying tank is
manually filled and emptied for each cook cycle.” Id. at 7. Patent Owner
argues that “Lavi is an individual use, counter-top appliance having
dimensions of a consumer product for home use” whereas the ‘539 Patent
“is directed to continuous use, industrial sized commercial frying systems.”
Id.
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
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inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004), quoted in Donner Tech., LLC v. Pro Stage
Gear, LLC, 979 F.3d 1353, 1359 (Fed. Cir. 2020) (applying the tests from In
re Bigio in an appeal from an inter partes review).
Petitioner responds that Lavi is in the same field as the ’539 patent:
“systems for frying food.” RMTA Sur-reply 10–11 (citing Keener RMTA
Decl. ¶ 147). Petitioner also argues that Lavi is “pertinent to the problem
that the substitute claims sought to solve”—the “problem of reducing the
amount of oil in the food”—in that Lavi “sought to reduce ‘the amount of oil
absorbed by the food articles during the deep-frying process.’” Id. at 11
(quoting Ex. 1036, 1:11–15, 1:18–22) (citing Keener RMTA Decl. ¶ 148).
We agree with Petitioner that both analogous art tests are satisfied
here. As to the field of the invention, we agree that both Lavi and the ’539
patent are in the same field of endeavor: systems for frying food. See
RMTA Sur-reply 10–11. As argued, the title, Field of the Invention, and
preamble of the proposed substitute claims of the ’539 patent all support that
view. See Ex. 1001, code (54) (“FRYING SYSTEM AND METHOD”),
1:21–23 (“The present invention relates to methods and systems for cooking,
and more specifically to such methods and systems for frying.”); RMTA 28
(Claims App.) (proposed substitute claim 12 reciting a “system for frying
one or more food items, comprising”). This aligns with the field of the
invention in Lavi: “a cooking appliance and a cooking method particularly
useful for deep-frying food articles, such as potatoes, chicken parts, and the
like, in a cooking oil.” Ex. 1036, 1:4–6, cited at RMTA Sur-reply 10–11.
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We also agree that Lavi is reasonably pertinent to the particular
problem with which the inventor of the ’539 patent was involved: reducing
the amount of oil absorbed into food. See Ex. 1001, 1:27–41 (discussing
how “[t]he oil present in the food items adds to the caloric content of the
food items”), cited at Keener RMTA Decl. ¶ 148; Ex. 1036, 1:11–15, 1:18–
22, cited at RMTA Sur-reply 11; Keener RMTA Decl. ¶ 148. Patent
Owner’s argument identifies certain differences between Lavi and the ’539
patent, but does not explain why these impact the analogous art analysis.
See RMTA Reply 6–8.
Second, Patent Owner argues that “the fry basket of Lavi is not easily
combinable with the frying system of [Van Den Berg] as doing so would
require considerable modification to both the basket of Lavi and the frying
tank of [Van Den Berg].” RMTA Reply 9 (citing Abraham RMTA Reply
Decl. ¶ 18). Patent Owner contends the “oil delivery system” of Van Den
Berg “would have to be re-designed to provide clearance for use of a fry
basket affixable to the user side (right side in Fig. 1) of the frying tank” and
that “[t]he level switch would also need to be moved or replaced with a
different sensing element for control of the oil circulating pumps . . . to
avoid interference with the fry basket when placed in the frying tank.” Id. at
9–10 (citing Abraham RMTA Reply Decl. ¶¶ 18–19).
The record does not support Patent Owner’s view that these alleged
technical issues would have dissuaded one of ordinary skill in the art from
combining Van Den Berg and Lavi. First, as noted by Petitioner, the need to
perform some modification in the context of the combination does not
necessarily undermine the motivation to combine. See RMTA Sur-reply 5
(citing Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1343
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(Fed. Cir. 2020) (“[A] person of ordinary skill is also a person of ordinary
creativity, not an automaton, so the fact that it would take some creativity to
carry out the combination does not defeat a finding of obviousness.”
(citation omitted))). In addition, as argued by Petitioner (id. at 12), “[t]he
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference” (Allied
Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d
1373, 1381 (Fed. Cir. 2016)).
The record also does not support the existence of the alleged technical
issues. For example, because oil delivery pipe 5 in Van Den Berg is shown
far to the right side in deep frying vessel 2 (see Ex. 1009, Fig. 1), it is
unclear why it would need to be “re-designed” to provide more “clearance”
for a fry basket, as argued by Patent Owner. See RMTA Reply 9. Further,
given that Van Den Berg does not actually indicate the location of the level
switch, it is unclear why that structure would “need to be moved or replaced
with a different sensing element.” Id. at 9–10; see Ex. 1009, 7:8–12
(discussing the level switch but not describing a location). Moreover, as
discussed in the Decision on Institution, we do not understand Petitioner as
relying on the embodiment of Van Den Berg that uses a level switch. See
Dec. Inst. 40 (citing Ex. 1009, 7:32–34 (“The valve 7 can be such that,
whether in conjunction with a level switch or not, it regulates the flow
quantity so as to keep the level in the deep-frying vessel constant.”
(emphasis added)). Dr. Abraham’s testimony largely restates Patent
Owner’s argument and does not clarify or add support for these issues.
RMTA Reply 9–10 (citing Abraham RMTA Decl. ¶ 82; Abraham RMTA
Reply Decl. ¶¶ 18–19).
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For the reasons above, we find, based on the complete record, that
Petitioner has demonstrated by a preponderance of the evidence that Van
Den Berg as modified by Lavi discloses the subject matter of this limitation,
that one of ordinary skill in the art at the time of the invention would have
had reason to modify Van Den Berg based on Lavi, as proposed, and that the
articulated reasoning is supported by rational underpinning. We need not
address Petitioner’s alternative positions that this limitation is disclosed by
Van Den Berg or that is would have been obvious based on Van Den Berg
alone. See Boston Sci., 809 F. App’x at 990 (stating that the “Board need
not address issues that are not necessary to the resolution of the proceeding,”
such as “alternative arguments with respect to claims [the Board] found
unpatentable on other grounds”).
(5) Element 12E
In claim language maintained from claim 1, proposed substitute claim
12 recites “a cooking oil delivery system comprising.” RMTA 28 (Claims
App.). To address this claim language, Petitioner highlights Van Den Berg’s
disclosure of “a separating or filtering system, a feedstock reservoir, means
for heating the oil, a pump and a pipe system which connects these parts to
each other in such a way that oil can be fed from the feedstock reservoir
into the deep-frying vessel and can be returned from the deep-frying
vessel, via the separating system to the feedstock reservoir.” Pet. 48
(quoting, with emphasis added by Petitioner, Ex. 1009, 1:1–8) (citing
Ex. 1009, code (57); Keener Pet. Decl. ¶¶ 226–227). We find, based on the
complete record, that Petitioner has demonstrated by a preponderance of the
evidence that Van Den Berg discloses this limitation. Patent Owner does not
present arguments for this limitation.
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(6) Element 12F
In claim language maintained from claim 1, proposed substitute claim
12 recites “a vat including a substantially hollow inner chamber for holding
cooking oil.” RMTA 28 (Claims App.). To address this claim language,
Petitioner identifies feedstock reservoir 3 and highlights the disclosure in
Van Den Berg that “oil can pass from the deep-frying vessel, via the
centrifuge, to the feedstock reservoir where it is kept in a fluid state or its
temperature is maintained.” Pet. 49 (quoting, with emphasis added by
Petitioner, Ex. 1009, 8:18–24) (citing Keener Pet. Decl. ¶¶ 230). Petitioner
argues that “Van Den Berg’s reservoir is not any less ‘substantially hollow’
than the ’539 patent’s ‘vat,’ which is shown to have a ‘filter 10,’ ‘heating
element 5,’ and ‘pipe 7,’ inside it.” Pet. 50 (citing Ex. 1001, Figs. 1, 3;
Keener Pet. Decl. ¶ 231). We find, based on the complete record, that
Petitioner has demonstrated by a preponderance of the evidence that Van
Den Berg discloses this limitation. Patent Owner does not present
arguments for this limitation.
(7) Element 12G
In element 12G, entirely added in the context of the Revised Motion
to Amend, proposed substitute claim 12 recites: “wherein the substantially
hollow inner chamber of the vat does not enclose a filter for filtering the
cooking oil in the cooking delivery system.” RMTA 28 (Claims App.).
As to this element, Petitioner states that “Van Den Berg discloses ‘a
feedstock reservoir (3)’ (the ‘vat’) that does not enclose a ‘centrifuge 9’ (the
‘filter’).” RMTA Opp. 14 (citing Ex. 1009, 7:1–20; Fig. 1; Keener RMTA
Decl. ¶ 190). We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
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discloses this limitation. Patent Owner does not present arguments for this
limitation.
(8) Element 12H
In claim language maintained from claim 1, proposed substitute claim
12 recites “a pump.” RMTA 28 (Claims App.). To address this claim
language, Petitioner identifies pump 4’ in Figure 1 of Van Den Berg. Pet. 50
(citing Ex. 1009, 1:4–8, 7:1–8; Keener Pet. Decl. ¶¶ 234–236). We find,
based on the complete record, that Petitioner has demonstrated by a
preponderance of the evidence that Van Den Berg discloses this limitation.
Patent Owner does not present arguments for this limitation.
(9) Element 12I
In element 12I, revised in the context of the Revised Motion to
Amend, proposed substitute claim 12 replaces “desired” with “substantially
constant” such that element 12I recites:
the pump being activated to deliver cooking oil from the vat to
the interior chamber of the frying tank in an amount that exceeds
the drainage of cooking oil from the interior chamber or the
cooking oil that is removed from the interior chamber during the
cooking process so as to raise the cooking oil level to
continuously maintain a substantially constant cooking oil level
in the interior chamber of the frying tank.
RMTA 28 (Claims App.) (emphasis added).
To address aspects of the original claim language, Petitioner states
that “Van Den Berg discloses ‘a pump and a pipe system [such] that oil can
be fed from the feedstock reservoir into the deep-frying vessel.’” Pet. 51
(quoting, with emphasis added by Petitioner, Ex. 1009, 1:4–8). Petitioner
then notes the disclosure of a “regulating system [that] can fill the deep-
frying vessel, by means of the pump, as soon as the ‘frying operation’ is
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switched on and can then ensure a continuous feed to the deep-frying vessel
from the feedstock reservoir.” Id. (quoting, with emphasis added by
Petitioner, Ex. 1009, 3:22–26). In the Opposition to the Revised Motion to
Amend, Petitioner also states that “Van Den Berg discloses a ‘continuous
system’ wherein ‘the pump . . . ensure[s] a continuous feed to the deep-
frying vessel from the feedstock reservoir . . . so as to keep the level in the
deep-frying vessel constant’ as oil is ‘used up during the frying process.”
RMTA Opp. 14–15 (quoting, with emphasis added by Petitioner, Ex. 1009,
3:22–30, 7:8–12, 7:28–34, 8:6–11) (citing Keener RMTA Decl. ¶¶ 197–
203); see also Pet. 52 (citing Keener Pet. Decl. ¶¶ 240–241) (providing
similar arguments in the Petition).
Patent Owner argues that this element “requires that the pump is
‘activated’ to add oil to the frying tank in order to ‘continuously maintain a
substantially constant cooking oil level’” and that, in contrast, in Van Den
Berg, “the pump is on continuously, and the regulating drain valve (7) . . . is
operated to remove oil from the frying tank to control the oil level.” RMTA
Reply 10 (citing Ex. 1047, 217:64–225:6, 223:25–225:6; Abraham RMTA
Decl. ¶¶ 64, 66; Ex. 1009, 3:14–26, 7:8–12, 7:32–34). According to Patent
Owner, “the drain valve of [Van Den Berg] is the component which is used
to maintain the oil level, not the inlet pump as is required by the claims.” Id.
Petitioner responds that “Van Den Berg’s pump is ‘activated’ when
the ‘“frying operation” is switched on [at which point it] can then ensure a
continuous’ feed of oil to the vessel” and that “it is immaterial that Van Den
Berg’s pump may work in conjunction with a valve to control the oil level.”
RMTA Sur-reply 6 (citing Keener RMTA Decl. ¶ 198).
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We agree with Petitioner’s understanding of element 12I and are not
persuaded by Patent Owner’s contrary argument that element 12I requires
that the “pump” alone perform all of the recited functions. Here, the
“pump” is necessary to performing the functions in element 12I in that,
without the pump, oil could not be delivered from the vat to the interior
chamber of the frying tank and the cooking oil level could not be raised to
continuously maintain a substantially constant level. As argued by
Petitioner, that other structures are also involved in performing those
functions in Van Den Berg does not undermine that the pump is “activated”
at startup to enable performance of those functions by the system overall, as
required by element 12I. See RMTA Sur-reply 6 (“The presence of
additional features that help control the oil level is irrelevant. Exergen Corp.
v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009).”); see
Exergen Corp., 575 F.3d at 1319 (“The claim uses the term ‘comprising,’
which is well understood in patent law to mean ‘including but not limited
to.’”). We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this limitation.
(10) Conclusion
For the reasons above, we determine, based on the complete record,
that Petitioner has demonstrated, by a preponderance of the evidence, that
proposed substitute claim 12 would have been obvious based on Van Den
Berg and Lavi. We do not reach whether proposed substitute claim 12 is
anticipated by Van Den Berg or would have been obvious based on Van Den
Berg alone.
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c. Proposed Substitute Claim 13
In claim language maintained from claim 2, proposed substitute claim
13 recites “wherein the cooking oil that is removed from interior chamber of
the frying tank during the cooking process is removed through absorption of
cooking oil into food items or the evaporation of cooking oil.” RMTA 29
(Claims App.). To address this claim language, Petitioner states that the
removal processes recited are inherent features of a frying process such as
that disclosed in Van Den Berg. Pet. 53 (citing Ex. 1009, 8:6–7; Ex. 1017 at
8, 15). Petitioner asserts that one of ordinary skill in the art “would know
that this oil consumption is due to the absorption of cooking oil into the food
or the evaporation of cooking oil, as both are well-known, natural
occurrences in this field and necessarily occur during frying.” Id. (citing
Keener Pet. Decl. ¶ 250).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
arguments addressing this claim. See In re NuVasive, 842 F.3d 1376, 1381
(Fed. Cir. 2016) (explaining that a patent owner waives an argument
presented in the preliminary response if it fails to renew that argument in the
patent owner response after trial is instituted). We determine, based on the
complete record, that Petitioner has demonstrated by a preponderance of the
evidence that proposed substitute claim 13 would have been obvious based
on Van Den Berg and Lavi.
d. Proposed Substitute Claim 14
In claim language maintained from claim 3, proposed substitute claim
14 recites “wherein at least a portion of the cooking oil that is removed from
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the interior chamber of the frying tank during the cooking process is
removed by drainage, and at least a portion of the drained cooking oil is
reintroduced to the interior chamber of the frying tank through the cooking
oil delivery system.” RMTA 29 (Claims App.). To address this claim
language, Petitioner identifies passages in Van Den Berg showing that some
of the melted fat or oil is removed via valve 7 (Pet. 54–55 (citing Ex. 1009,
7:8–20, 8:1–11; Keener Pet. Decl. ¶¶ 257–258)) and that pump 4
reintroduces the melted fat or oil to vessel 2 (Pet. 55–56 (citing Ex. 1009,
code (57), 8:1–11, Fig. 1; Keener Pet. Decl. ¶¶ 261–263)).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 14 would
have been obvious based on Van Den Berg and Lavi.
e. Proposed Substitute Claim 15
In claim language maintained from claim 4, proposed substitute claim
15 recites “wherein the frying tank has an open top through which one or
more food items may be introduced into the interior chamber or removed
from the interior chamber.” RMTA 29 (Claims App.). To address this
claim language, Petitioner highlights optional cover 15 and states that one of
ordinary skill in the art “would understand that Van Den Berg’s ‘deep-frying
vessel 2’ would have an ‘open top’ so that food is placed inside it when
‘cover 15’ is removed.” Pet. 57 (citing Ex. 1009, 7:39–8:1; Keener Pet.
Decl. ¶¶ 269–270). Petitioner adds that “[w]hen the ‘cover 15’ is off, the
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‘open top’ of the ‘interior chamber’ is exposed, and food is added to the
‘interior chamber.’” Pet. 58 (citing Keener Pet. Decl. ¶¶ 269–272). In the
alternative, Petitioner relies on the embodiment of Van Den Berg without
cover 15 present. See Pet. 58 n.12. The version of Van Den Berg’s system
with cover 15 satisfies this claim language under even Petitioner’s narrower
proposed construction. See § II.B.
Thus, we find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 15 would
have been obvious based on Van Den Berg and Lavi.
f. Proposed Substitute Claim 16
In claim language maintained from claim 5, proposed substitute claim
16 recites “wherein the frying tank has an open state in which one or more
food items may be introduced into the interior chamber or removed from the
interior chamber.” RMTA 29–30 (Claims App.). To address this claim
language, Petitioner again highlights optional cover 15 and states that one of
ordinary skill in the art “would understand that Van Den Berg’s ‘deep-frying
vessel 2’ would have an ‘open state’ when ‘cover 15’ is opened, such as
when the food is added or removed.” Pet. 59 (citing Ex. 1009, 7:39–8:1;
Keener Pet. Decl. ¶¶ 279–281).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
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arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 16 would
have been obvious based on Van Den Berg and Lavi.
g. Proposed Substitute Claim 17
In claim language maintained from claim 6, proposed substitute claim
17 recites “wherein the cooking oil delivery system further comprises: a first
conduit in communication with the pump for conducting cooking oil from
the vat to the interior chamber, and a second conduit to drain cooking oil
from the interior chamber.” RMTA 30 (Claims App.). To address this
claim, Petitioner identifies pipe 5 on the right side of Figure 1 of Van Den
Berg as the “first conduit” and identifies pipes 6 and 8 together as the
“second conduit.” Pet 60–62 (citing Ex. 1009, 7:3–5, 7:8–21, Fig. 1; Keener
Pet. Decl. ¶¶ 287–290, 293–295).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 17 would
have been obvious based on Van Den Berg and Lavi.
h. Proposed Substitute Claim 18
In claim language maintained from claim 7, proposed substitute claim
18 recites “wherein at least a portion of the cooking oil drained from the
frying tank is reintroduced into the cooking oil delivery system.” RMTA 30
(Claims App.). To address this claim, Petitioner identifies passages in Van
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Den Berg showing that some of the oil is removed from vessel 2 via pipes 6
and 8 via into feedstock reservoir 3 (Pet. 62–63 (citing Ex. 1009, 7:3–5, 7:8–
12, 7:16–20, Fig. 1; Keener Pet. Decl. ¶ 301)) and that oil is pumped around
continuously from feedstock reservoir 3 to vessel 2 and back to feedstock
reservoir 3 (Pet. 63–64 (citing Ex. 1009, code (57), 8:3–24, Fig. 1; Keener
Pet. Decl. ¶¶ 302, 304–306)).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 18 would
have been obvious based on Van Den Berg and Lavi.
i. Proposed Substitute Claim 19
In claim language maintained from claim 8, proposed substitute claim
19 recites “wherein the pump is operated to continuously provide the frying
tank with a quantity of cooking oil.” RMTA 30 (Claims App.). To address
this claim, Petitioner highlights a disclosure in Van Den Berg that, “[w]hen
the fat is melted, the pump 4’ can be switched on and the valve 7 can be
opened. Circulation then begins, a relatively large quantity of melted fat or
oil thus being circulated through the deep-frying vessel and through the
centrifuge.” Ex. 1009, 8:8–11, quoted at Pet. 64–65 (citing Ex. 1009, 8:3–
24, 7:28–31, 3:22–30; Keener Pet. Decl. ¶ 312). Petitioner also notes the
disclosure that “the frying fat or oil can be pumped round continuously from
a feedstock reservoir (3), in which the oil can be kept at the desired
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temperature, to the deep-frying vessel (2) and back to the feedstock reservoir
(3).” Ex. 1009, code (57), quoted at Pet. 65 (citing Keener Pet. Decl. ¶ 313).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 19 would
have been obvious based on Van Den Berg and Lavi.
j. Proposed Substitute Claim 20
In claim language maintained from claim 11, proposed substitute
claim 20 recites “wherein the pump is activatable for delivering cooking oil
to raise the cooking oil level in the interior chamber of the frying tank when
desired.” RMTA 31 (Claims App.). To address this claim, Petitioner
identifies pump 4 in Van Den Berg as the “pump” and highlights a
disclosure that “the regulating system can fill the deep-frying vessel, by
means of the pump, as soon as the ‘frying operation’ is switched on and
can then ensure a continuous feed to the deep-frying vessel from the
feedstock reservoir.” Pet. 68 (quoting, with emphasis added by Petitioner,
Ex. 1009, 3:22–30) (citing Ex. 1009, 7:8–12; 7:32–34). According to
Petitioner, “Van Den Berg’s pump is therefore ‘activatable’ when the frying
operation ‘is switched on’ (i.e. ‘when desired’).” Id. (citing Keener Pet.
Decl. ¶¶ 335–336).
We find, based on the complete record, that Petitioner has
demonstrated by a preponderance of the evidence that Van Den Berg
discloses this additional limitation. Patent Owner does not present
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arguments addressing this claim. See NuVasive, 842 F.3d at 1381. We
determine, based on the complete record, that Petitioner has demonstrated by
a preponderance of the evidence that proposed substitute claim 20 would
have been obvious based on Van Den Berg and Lavi.
9. Asserted Unpatentability of Proposed Substitute Claims 12–
20 Based on Sugimoto and Based on Boots
Petitioner contends that Sugimoto anticipates proposed substitute
claims 12–20, or, in the alternative, renders obvious proposed substitute
claims 12–20, either alone or in combination with Lavi. RMTA Opp. 15–
18; RMTA Sur-reply 7–9. In addition, Petitioner contends that Boots
anticipates proposed substitute claims 12–20, or, in the alternative, renders
obvious proposed substitute claims 12–20, either alone or in combination
with Lavi. RMTA Opp. 18–22; RMTA Sur-reply 9–11. Because the ground
based on Van Den Berg is dispositive as to all the proposed substitute
claims, we need not reach the grounds based on Sugimoto or Boots. See
SAS, 138 S. Ct. at 1359; Boston Sci., 809 F. App’x at 990; SK Hynix Inc. v.
Netlist, Inc., IPR2017-00692, Paper 25 at 40 (PTAB July 5, 2018)
(determining all challenged claims to be unpatentable and not addressing
additional grounds).
III. CONCLUSION
Based on Patent Owner’s non-contingent request, we grant in part
Patent Owner’s Revised Motion to Amend as to canceling claims 1–11. We
deny, however, Patent Owner’s Revised Motion to Amend as to substituting
proposed claims 12–20. We determine that Patent Owner has failed to carry
its burden as to the statutory and regulatory requirements as to the Revised
Motion to Amend, and, to the extent Patent Owner did carry its burden, we
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determine that Petitioner has proven, by a preponderance of the evidence,
the unpatentability of proposed substitute claims 12–20.11
IV. ORDER
For the reasons above, it is:
ORDERED that Patent Owner’s Revised Motion to Amend is granted
as to canceling challenged claims 1–11;
FURTHER ORDERED that Patent Owner’s Revised Motion to
Amend is denied as to proposed substitute claims 12–20; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

11 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the issuance
of this decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
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In summary:
Claims 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–11 102 Campbell12
1–11 102 Van Den Berg
1–11 102 Sugimoto
Overall
Outcome

Motion to Amend Outcome Claim(s)
Original Claims Cancelled by Amendment 1–11
Substitute Claims Proposed in the Amendment 12–20
Substitute Claims: Motion to Amend Granted
Substitute Claims: Motion to Amend Denied 12–20
Substitute Claims: Not Reached

12 As explained above, we do not reach any of these rejections as claims
1–11 have been unconditionally cancelled.
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FOR PETITIONER:

Joseph A. Loy
Nathan S. Mammen
Aaron Resetarits
KIRKLAND & ELLIS LLP
joseph.loy@kirkland.com
nathan.mammen@kirkland.com
aaron.resetarits@kirkland.com

Kevin W. Kirsch
Kevin P. Flynn
BAKER & HOSTETLER LLP
kkirsch@bakerlaw.com
kflynn@bakerlaw.com

FOR PATENT OWNER:

Richard A. Wojcio, Jr.
FRIEDMAN, SUDER & COOKE
wojcio@fsclaw.com

Brett M. Pinkus
WICK PHILLIPS
brett.pinkus@wickphillips.com