884 F.3d 1350
Fed. Cir.2018Background
- Steuben Foods owns U.S. Patent No. 6,481,468 (the ’468 patent) directed to aseptic food-packaging systems; claim 9 depends on claim 1 and uses the term “aseptically disinfecting.”
- Nestlé sought inter partes review of claim 9; the Patent Trial and Appeal Board found claim 9 not obvious and adopted a construction for “aseptic” different from Steuben’s declared definition.
- Nestlé had previously appealed a Board construction of the same term “aseptic” in a related Steuben patent (the ’013 patent); this court in that prior appeal construed “aseptic” per the patents’ express lexicography to mean the “FDA level of aseptic.”
- The ’468 and ’013 patents contain identical lexicographic statements in their specifications defining “aseptic” as the United States FDA level of aseptic; both patents claim priority to the same provisional and have substantially similar disclosures.
- Because the same claim term, same specification lexicography, and no material differences in prosecution history exist between the two matters, the court held that the claim-construction issue had been fully and fairly litigated previously.
Issues
| Issue | Plaintiff's Argument (Nestlé) | Defendant's Argument (Steuben Foods) | Held |
|---|---|---|---|
| Proper construction of “aseptic” / “aseptically disinfecting” | Board erred; term should follow prior appellate construction as “FDA level of aseptic” | Board’s different construction was permissible in this proceeding | Court applied collateral estoppel, vacated Board’s construction, and construed “aseptic” to mean the “FDA level of aseptic.” |
| Applicability of collateral estoppel to claim construction | Preclusion should bar relitigation of the same construed issue | Issue could be relitigated here despite prior appeal | Court held collateral estoppel applies because the same issue was fully and fairly litigated and resolved against Steuben. |
| Effect of erroneous claim construction on nonobviousness ruling | Erroneous construction requires vacatur of Board’s nonobviousness finding | Board’s substantive nonobviousness finding stands regardless of term construction | Court vacated the Board’s nonobviousness determination and remanded for proceedings consistent with the corrected construction. |
| Whether patents’ disclosures/prosecution create different claim-construction contexts | Prior ruling controls because patents use identical lexicography and related disclosures | Differences in patents could justify different constructions | Court found no material differences; applied prior construction to the ’468 patent. |
Key Cases Cited
- Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir.) (issue preclusion applies to patent claim-construction issues)
- Maxlinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373 (Fed. Cir.) (collateral estoppel applies in administrative proceedings)
- Nestlé USA, Inc. v. Steuben Foods, Inc., 686 F. App’x 917 (Fed. Cir.) (prior appellate construction: "aseptic" means the FDA level of aseptic)
- Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314 (Fed. Cir.) (same claim term in related patents generally receives the same construction)
VACATED AND REMANDED for further proceedings consistent with this construction.