Kerry Group Services International Ltd. v. Florida Food Products, LLC

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
KERRY GROUP SERVICES INTERNATIONAL
LTD.,
Appellant
v.
FLORIDA FOOD PRODUCTS, LLC,
Appellee
______________________
2023-2092
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00006.
______________________
Decided: February 24, 2025
______________________
MICHAEL G REGORY RAUCCI, Sughrue Mion, PLLC,
Washington, DC, argued for appellant. Also represented
by MARK BOLAND, R AJA SALIBA .
BRIAN E. F ERGUSON, Winston & Strawn LLP, Washing-
ton, DC, argued for appellee. Also represented by MICHAEL
A. BITTNER, MICHAEL B. J OHNSON, Dallas, TX; L OUIS
CAMPBELL , Redwood City, CA.
______________________
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KERRY GROUP SERVICES INTERNATIONAL LTD. v.
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Before P ROST , T ARANTO, and CHEN, Circuit Judges.
CHEN, Circuit Judge.
Patent owner Kerry Group Services International Ltd.
(Kerry) appeals an inter partes review (IPR) final written
decision of the United States Patent and Trademark Office
Patent Trial and Appeal Board (Board). Fla. Food Prods.,
LLC v. Kerry Grp. Servs. Int’l Ltd., No. IPR2022-00006,
2023 WL 12026763 (P.T.A.B. Apr. 26, 2023) (Decision). The
Board held claims 1–5 of U.S. Patent No. 11,071,304 (’304
patent) unpatentable under 35 U.S.C. § 103 over the com-
bined disclosures of Voorde1 and Hara.2 For the following
reasons, we vacate and remand.
BACKGROUND
I
The ’304 patent is titled “Method and Composition for
Preparing Cured Meat Products” and generally relates to
using a curing agent to preserve meat. In the background
section, the patent explains that a known method for pre-
paring cured meat involved exposing the meat to a “nitrate-
containing substance” and adding “[b]acteria or other or-
ganisms that are capable of converting the nitrate to ni-
trite . . . to the mixture of the meat . . . and the nitrate-
containing substance.” ’304 patent col. 1 ll. 10–16. The
conversion of nitrate to nitrite is important because nitrite
is responsible for “giv[ing] the meat a distinct color and fla-
vor, in addition to preventing the growth of harmful micro-
organisms.” Id. col. 1 ll. 16–18.
1 Belgian Patent App. Pub. No. 1014557A6. An Eng-
lish translation of Voorde was submitted in the IPR. See
J.A. 718–34.
2 U.S. Patent No. 3,911,146.
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The patent identifies two primary issues with the prior
art approach, which converts nitrate to nitrite directly on
the meat. First, “[t]he number and sensitivity of the steps
involved in such curing processes leads to variable curing
of the meat, resulting in an inconsistent product.” Id. col.
1 ll. 19–22. Second, “the process of converting nitrate to
nitrite using bacteria or another organism requires addi-
tional processing time, thus slowing the prior art pro-
cesses.” Id. col. 1 ll. 22–24.
To address these problems, the patent’s proposed solu-
tion is to prepare the curing agent “outside the meat curing
process.” Id. col. 1 ll. 37–41. Preparing the curing agent in
this manner “simplifies the number of steps involved in the
curing process, increases the speed at which the process oc-
curs, and generally results in a more consistent product.”
Id. col. 1 ll. 41–44. The curing agent comprises a plant-
based nitrite derived from plant material, see id. col. 2
ll. 14–18, and an added organism capable of converting ni-
trate to nitrite, see id. col. 3 ll. 15–20. Prior to conversion
of nitrate to nitrite, the plant-based material can be sub-
jected to additional processing steps, including “heat treat-
ment, filter sterilization, or a process which reduces the
initial microbial load.” Id. col. 3 ll. 4–8.
Independent claim 1 is illustrative of claims 1–5 (the
challenged claims) and recites:
1. A process for preserving a meat or meat product
comprising
contacting the meat or meat product to be
preserved with a curing agent comprising a
plant-based nitrite and an added organism,
the plant-based nitrite being derived from
a plant material comprising at least about
50 ppm nitrate and the organism,
wherein the plant material is heat treated
prior to addition of the organism so as to
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have a reduced microbial load relative to a
naturally occurring microbial load of the
plant material,
the organism inactivated, wherein the or-
ganism was capable of converting nitrate to
nitrite before the inactivation, and
preserving the contacted meat or meat
product.
Id. at claim 1 (emphasis added to highlight the disputed
limitation and line breaks added to increase readability).
II
There are two prior art references relevant to this ap-
peal: Voorde and Hara.
Voorde, like the ’304 patent, discloses a solution that
involves preparing a curing agent before adding it to the
meat. Voorde begins by discussing natural nitrite treat-
ment processes, including the prior art process found in
Hara, which applies the plant material directly to the meat
without first converting nitrate to nitrite. See J.A. 720–21
(citing “US-A-3 911 146,” referring to Hara). Voorde iden-
tifies similar drawbacks to this process as those noted in
the background of the ’304 patent. Specifically, Voorde
highlights the lengthy aging process and the lack of a ho-
mogeneous result. J.A. 721. Accordingly, Voorde’s method
uses a “vegetable material containing at least nitrate” as a
“starting material,” and, “before treating the meat product
with the liquid [vegetable material], nitrate is converted
into nitrite.” J.A. 722.
Voorde explains that “[t]he nitrate can be converted
into nitrite by allowing the natural enzymatic and/or mi-
crobiological conversion processes to run their course for a
certain period of time.” J.A. 725. Voorde also explains that
“[o]ptionally, additional micro-organisms or, in other
words, so-called starter cultures can be added for this
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purpose.” Id. In addition, Voorde specifies preferred tem-
peratures for the conversion process. For instance, Voorde
discloses that temperatures above 40°C are preferred for
“the conversion of nitrate into nitrite,” with temperatures
“higher than 50°C, for example . . . 52°C,” being even more
desirable “because at these temperatures undesired micro-
organisms are killed and the material is thus (partially)
sterilized.” Id. However, Voorde warns against heating
“higher than 80°C, and more preferably not higher than
70°C, in order not to excessively reduce the enzymatic and
microbiological conversion processes necessary for the con-
version of nitrate into nitrite.” J.A. 726.
Hara, referenced in Voorde’s opening paragraphs, de-
scribes the use of water-soluble plant ingredients to effec-
tively preserve the color of animal tissue. J.A. 3509 col. 1
ll. 20–30. Hara explains that suitable water-soluble ingre-
dients can be extracted from the solids of the plant by boil-
ing or otherwise heating the vegetables. See, e.g.,
J.A. 3510–11 col. 3 ll. 13–16 (“The second potion of each
sample was heated in a container on a steam bath at about
100°C for 30 minutes, and solids were removed thereaf-
ter . . . .”), col. 5 ll. 10–16 (“boiling”). Hara further discloses
that “[u]nless the water-soluble plant ingredients are to be
used immediately after their preparation, it is preferred to
sterilize the material to prevent its decomposition.” J.A.
3509 col. 1 ll. 59–62.
III
Florida Food Products, LLC (FFP) filed a petition for
IPR presenting five grounds of unpatentability, only the
first of which is relevant to this appeal. Ground one as-
serted that claims 1–5 “are obvious over Voorde in view of
Hara.” J.A. 84; see also J.A. 85 (“Ground I: Obvious Over
Voorde and Hara”). FFP argued that Voorde discloses
every limitation in claim 1 except for the heating limita-
tion, which recites: “wherein the plant material is heat
treated prior to addition of the organism so as to have a
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reduced microbial load relative to a naturally occurring mi-
crobial load of the plant material.” ’304 patent at claim 1
(emphasis added). In its petition, FFP acknowledged that
Voorde does not disclose adding the “starter cultures after
heating the vegetable,” but argued that it would have been
obvious to heat the plant material alone using the methods
disclosed in Hara. J.A. 89–90 (“The combination [of Voorde
and Hara] merely adds the known step of heating the veg-
etable to predictably kill germs.” (emphasis added)). Spe-
cifically, FFP explained that a skilled artisan “would have
found it obvious to: 1) boil or heat a plant material to kill
unwanted germs, 2) let the resulting plant material cool,
and then 3) add the starter culture.” J.A. 90–91. Thus,
ground one required a combination of Voorde and Hara.
The Board instituted review, characterizing FFP’s pe-
tition as asserting that the challenged claims “would have
been obvious over the combined disclosures of Voorde and
Hara.” J.A. 278 (emphasis added). After summarizing the
parties’ arguments, the Board determined that FFP had
sufficiently established, for purposes of instituting the IPR,
why a skilled artisan “would have modified Voorde’s pro-
cess to use Hara’s sterilization step.” J.A. 280.
In its patent owner response, Kerry spent considerable
effort arguing that it would not have been obvious to a
skilled artisan to combine the teachings of Voorde and
Hara. Kerry argued that “FFP proposes a significant mod-
ification of Voorde’s process,” and that these modifications
“are not taught by the actual disclosures of Voorde or Hara”
and “are counter to Voorde’s teaching.” J.A. 347, 349; see
also J.A. 347–74. As just one example, Kerry contended
that a skilled artisan “would have understood that Voorde
purposely excluded Hara’s initial heating step,” because
Voorde “explicitly discouraged” a skilled artisan from heat-
ing to temperatures in excess of 70°C. J.A. 364–66 (empha-
sis omitted).
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Subsequently, FFP in its reply stated that Hara’s role
in the asserted unpatentability ground was limited to evi-
dence of the general knowledge of a skilled artisan, rather
than being expressly relied upon as part of a combination
with Voorde. FFP’s reliance on this theory became evident
at the IPR oral hearing, where FFP asserted that “Hara is
relied on, not for a physical combination of Voorde and
Hara,” but as “objective evidence that support[s]” the
knowledge of a skilled artisan. Record of Oral Hearing at
12:1–13:1, Fla. Food Prods., No. IPR2022-00006, Paper No.
42.
In its final written decision, the Board determined that
a skilled artisan “would have had reason to modify Voorde
in the manner FFP suggests.” Decision, 2023 WL
12026763, at *8. The Board acknowledged some confusion
regarding Hara’s role in the asserted unpatentability
ground, noting that it “is not so clear” whether Hara was
relied upon for a physical combination or as evidence of the
routine heating of vegetables before use. Id. at *9. None-
theless, regardless of whether heating to 100°C was re-
quired by the combination, the Board found that modifying
Voorde to perform the heating step first before adding the
starter culture would not “have been beyond the ordinary
level of skill in the art,” and would not “have made Voorde’s
process unsuitable for its intended purpose.” Id.
Kerry appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A).
D ISCUSSION
Obviousness is a legal question based on underlying
questions of fact. Virtek Vision Int’l ULC v. Assembly Guid-
ance Sys., Inc., 97 F.4th 882, 886 (Fed. Cir. 2024). “We re-
view the Board’s ultimate determination of obviousness de
novo and its underlying findings of fact for substantial ev-
idence.” Id. “What the prior art teaches, whether a person
of ordinary skill in the art would have been motivated to
combine references, and whether a reference teaches away
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from the claimed invention are questions of fact.”
Chemours Co. FC, LLC v. Daikin Indus., Ltd., 4 F.4th 1370,
1374 (Fed. Cir. 2021) (citation omitted).
I
As an initial matter, Kerry argues that the Board relied
on a new theory of unpatentability not presented in the IPR
petition—Voorde alone. See Appellant’s Br. 32–37. An IPR
must proceed “in accordance with or in conformance to the
petition.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 365 (2018)
(cleaned up); see 35 U.S.C. § 312(a)(3). Our court has ex-
plained that “[b]ecause of the expedited nature of IPR pro-
ceedings, it is of the utmost importance that petitioners in
the IPR proceedings adhere to the requirement that the in-
itial petition identify with particularity the evidence that
supports the grounds for the challenge to each claim.”
Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330
(Fed. Cir. 2019) (cleaned up). Accordingly, “the Board must
base its decision on arguments that were advanced by a
party, and to which the opposing party was given a chance
to respond.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
1364, 1381 (Fed. Cir. 2016); see also EmeraChem Holdings,
LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 1341, 1349
(Fed. Cir. 2017) (“Where the petitioner uses certain prior
art references to target specific claims with precision, or
the Board does the same in its decision to institute, the pa-
tent owner is directed to particular bases for alleged obvi-
ousness.”).
We find the Board’s decision unclear as to whether it
relied on a new obviousness theory based on Voorde alone.
This lack of clarity stems largely from the Board’s own con-
fusion as to whether Hara was being relied upon for a com-
bination with Voorde or whether Hara served as evidence
of a skilled artisan’s general knowledge. See Decision, 2023
WL 12026763, at *9. At times, the Board appeared to read
Voorde’s disclosure of partial sterilization as itself satisfy-
ing the heating limitation. See, e.g., id. (“[W]e find that
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Voorde would have taught the person of ordinary skill to
heat treat a medium to around 50°C.”); id. (“At the very
least, the skilled artisan would have looked to Hara as evi-
dence that pre-treatment using heat could be beneficial to
reduce microbial load, a disclosure confirmed by Voorde.”
(emphases added)).
That said, ground one in FFP’s petition relied on a com-
bination of Voorde and Hara for disclosing the heating lim-
itation. See J.A. 84–85, 89–91. FFP’s petition did not
present an obviousness ground that was based on Voorde
alone. In its institution decision, the Board appropriately
understood FFP’s petition to assert a combination of the
two references. See, e.g., J.A. 278 (“FFP contends that
claims 1–5 . . . would have been obvious over the combined
disclosures of Voorde and Hara.” (emphasis added)).
To the extent the Board found the challenged claims to
be unpatentable based on an obviousness ground that was
not presented in the petition, this was error. See Kon-
inklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1336–
37 (Fed. Cir. 2020) (holding that the Board erred by insti-
tuting IPR based on a combination of references that the
petitioner “did not advance in its petition.”). On remand,
the Board must hold FFP to the obviousness theory articu-
lated in ground one.
II
Next, we address the Board’s analysis of the combina-
tion of Voorde and Hara. “Our precedent dictates that the
[Board] must make a finding of a motivation to combine
when it is disputed.” In re Nuvasive, Inc., 842 F.3d 1376,
1382 (Fed. Cir. 2016); see also Virtek, 97 F.4th at 887
(“[T]here must exist a motivation to combine various prior
art references in order for a skilled artisan to make the
claimed invention.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns
whether a skilled artisan not only could have made but
would have been motivated to make the combinations or
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modifications of prior art to arrive at the claimed inven-
tion.”). Conclusory statements by the Board are insuffi-
cient. Nuvasive, 842 F.3d at 1383. Rather, “the finding
must be supported by a ‘reasoned explanation.” Id. (cita-
tion omitted); see also id. at 1381–82 (“[T]he factual inquiry
whether to combine references must be thorough and
searching, and the need for specificity pervades our author-
ity on the [Board’s] findings on motivation to combine.”
(cleaned up)).
We hold that the Board’s finding that a skilled artisan
would have combined Voorde and Hara in the manner FFP
lacks a reasoned explanation that is supported by substan-
tial evidence.
The Board found that heating to 100°C would not “be
inconsistent with Voorde or destroy its intended purpose,
as Kerry argues” because Voorde discloses “a starter cul-
ture, which would have replaced any microbes destroyed by
Hara’s sterilization.” Decision, 2023 WL 12026763, at *9
(citing J.A. 357–69 (Kerry’s patent owner response)). The
Board’s rationale—that the addition of a starter culture af-
ter sterilization of Voorde’s vegetable material would “re-
place” any destroyed microbes—is insufficient in this case.
Voorde discloses that the starter culture is optionally
added and never discloses that it replaces microbes, let
alone replaces destroyed microbes. See J.A. 725. The
Board cited no evidence for its finding.
While the Board does not need to address every piece
of evidence, here, the Board’s single statement is particu-
larly problematic for failing to address a multitude of argu-
ments Kerry raised in its patent owner response
addressing why a skilled artisan would not have been mo-
tivated to make the proposed combination. These argu-
ments include, for example, that: both Voorde and Hara
disclose an option of end-product sterilization, which cuts
against initial sterilization, see J.A. 353–56; Hara’s heating
is for making a plant juice, not killing germs, see J.A. 357;
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Voorde referenced Hara, yet looked to provide a better pro-
cess, see J.A. 358–59; Voorde discloses heating up to a mod-
erate temperature and warns against heating above 80°C,
see J.A. 359–61; Voorde discloses that the optional starter
culture is additional to the natural enzymes and microbes,
not a substitute, see J.A. 362–63.
One of Kerry’s key arguments before the Board and on
appeal is that Voorde teaches away from boiling the plant
at 100°C, as disclosed in Hara, because Voorde explains
that “[p]referably, the heating is not higher than
80°C . . . in order not to excessively reduce the enzymatic
and microbiological conversion processes necessary for the
conversion of nitrate into nitrite.” J.A. 726. Yet, the Board
failed to address the merits of Kerry’s teaching away argu-
ment, along with its other arguments outlined above. Alt-
hough the Board acknowledged a few of Kerry’s arguments
at a high level while summarizing the parties’ arguments,
see Decision, 2023 WL 12026763, at *8, “it is not adequate
to summarize and reject arguments without explaining
why the [Board] accepts the prevailing argument.” Nuva-
sive, 842 F.3d at 1383. The Board’s lack of meaningful en-
gagement with these arguments precludes us from being
able to affirm its finding.
The Board also passed over the timing of the heating
limitation, finding that a skilled artisan would have “mod-
ified [Voorde’s] process to add the starter culture subse-
quent to Hara’s sterilization step.” Decision, 2023 WL
12026763, at *9. As support, the Board cited only Kerry’s
expert, Dr. Milkowski, who testified that if he was adding
a starter culture, he would do so after heating. Id. (citing
J.A. 4461 at 88:19–89:6). However, the Board failed to ar-
ticulate “a reason why the [skilled artisan] would have been
motivated to modify” Voorde in light of Hara. Nuvasive,
842 F.3d at 1384. The testimony of Dr. Milkowski does not
supply that missing reason.
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Furthermore, we note that the Board references
“Hara’s sterilization” and “Hara’s sterilization step.” Deci-
sion, 2023 WL 12026763, at *9. However, Hara discloses
boiling the plant material as part of its preparation process
for extracting liquids from the solid plant—not necessarily
for sterilization. See, e.g., J.A. 3511 col. 5 ll. 10–16. Hara
separately discloses that it is preferred to sterilize the end
products by heating to 90°C if they are not “used immedi-
ately after their preparation.” J.A. 3509 col. 1 ll. 59–62.
Accordingly, the Board’s vague references to “Hara’s steri-
lization” are insufficient. A more thorough explanation is
needed to address whether, and why, a skilled artisan
would be motivated to combine Voorde’s process, which
also discloses end-product sterilization, with Hara’s initial
step of boiling or heating the vegetable material—the step
expressly relied upon in FFP’s petition. See J.A. 89 (FFP’s
petition) (“In each of Hara’s examples 2–7, the plants are
prepared using a process that includes boiling or heating.”);
J.A. 353–56 (Kerry’s patent owner response) (“[B]oth
Voorde and Hara explicitly provide a step of sterilizing at
the end, after making their products.” (emphasis omitted)).
Finally, the Board found that a skilled artisan “seeking
to reduce microbial load in a plant material prior to con-
verting nitrate to nitrite, would have combined Voorde and
Hara’s disclosures.” Decision, 2023 WL 12026763, at *9
(emphases added). Here, the Board did not explain why a
skilled artisan would have been seeking to reduce micro-
bial load in a plant material prior to converting nitrate to
nitrite.
FFP argues that testimony from its expert, Dr. Bald-
win, provides substantial evidence to support the Board’s
finding. See Appellee’s Br. 28–29, 48–49. We disagree.
Within its analysis, the Board does not cite to Dr. Baldwin
or otherwise discuss his rationale that “heating, boiling, or
steaming the vegetable would be as common as washing
one’s hands before cooking a meal—a matter of routine
sanitization.” J.A. 674 ¶ 119. Accordingly, this uncredited
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testimony does not change the Board’s analysis, nor does it
provide substantial evidence for its findings.
At bottom, the Board erred by not addressing Kerry’s
evidence and arguments against a motivation to combine
and by failing to provide an adequate explanation for that
finding.
CONCLUSION
We have considered the parties’ remaining arguments
and find them unpersuasive. For the foregoing reasons, we
vacate and remand for additional findings and explana-
tions regarding a skilled artisan’s motivation to combine
Voorde and Hara consistent with ground one presented in
FFP’s petition.
VACATED AND REMANDED
Costs
Costs to Appellant.
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