686 F. App'x 917
Fed. Cir.2017Background
- Nestle petitioned for inter partes review of claims 18–20 of U.S. Patent No. 6,945,013, which claim methods for "automatically aseptically bottling aseptically sterilized foodstuffs" at >100 bottles/min and filling with aseptically sterilized foodstuffs.
- The Patent Trial and Appeal Board instituted IPR and construed the term "aseptic" to mean "aseptic to any applicable United States FDA standard, and in the absence of any such standard, aseptic assumes its ordinary meaning of free or freed from pathogenic microorganisms."
- Based on that construction and the prior art, the Board found claims 18–20 nonobvious. Nestle appealed the Board’s claim construction and resulting decision.
- The patent specification explicitly defines "aseptic" twice as the United States "FDA level of aseptic," creating a patentee lexicography issue.
- The Federal Circuit found the Board erred by importing all "applicable" FDA standards into the claim term rather than limiting the scope to FDA regulations specifically governing aseptic processing/packaging.
- The court vacated and remanded, directing the Board to construe "aseptic" to mean the "FDA level of aseptic" limited to FDA regulations related to aseptic packaging and to proceed accordingly.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "aseptic" in claims 18–20 | Board’s construction is erroneous; "aseptic" should be limited to FDA regulations governing aseptic packaging (Nestle) | "FDA level of aseptic" incorporates any applicable FDA standard, i.e., the full panoply of FDA standards (Steuben/Board) | Court: "aseptic" is defined by the patent as the "FDA level of aseptic," but that phrase is limited to FDA regulations related to aseptic processing/packaging, not all FDA standards. |
| Whether Board may apply lexicography and plain meaning simultaneously | Patentee’s explicit specification definition controls; no concurrent dual meanings | Board applied a two-step construction (lexicography then default to ordinary meaning) | Court: Patentee’s lexicographic definition is binding; a term cannot hold two meanings simultaneously, so the Board’s two-step approach was improper. |
Key Cases Cited
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (review standards for Board claim construction and extrinsic evidence)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S. 2016) (Board must apply broadest reasonable construction in IPR)
- In re Skvorecz, 580 F.3d 1262 (Fed. Cir.) (claim construction cannot be legally incorrect under BRI)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.) (patentee may be his own lexicographer)
- Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir.) (specification definitions control when patentee explicitly defines a term)
- Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.) (purpose of claim construction is to determine meaning and scope of claims)