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Henny Penny Corp. v. Frymaster LLC

PTAB May Disregard IPR Petitioner’s Reply Theory Differing From Petition

Henny Penny Corp. v. Frymaster LLC, __ F.3d __, 2019 WL 4308876 (Fed. Cir. Sept. 12, 2019) (LOURIE, Chen, Stoll) (PTAB) (2 of 5 stars)

Fed Cir affirms IPR confirmation of Frymaster’s claims against HPC’s obviousness challenge. The claims related to measuring the condition of cooking oil in a deep fryer. The Board did not abuse its discretion when it declined to consider certain arguments in HPC’s reply, and describes how the reply argument (that a PHOSITA could practice a “sensor” limitation based solely on the primary reference) was substantially different from that in the petition (that a PHOSITA would substitute in a sensor from the secondary reference). HPC’s contention that obviousness does not require physical substitutability was not on point because of this difference between the two arguments.

The record supported the non-obviousness determination. The record supported the determination that HPC had not shown a reason for combining the proposed references. Though HPC had identified benefits from the combination, there were also downsides, and “a reasonable factfinder could have found [such] tradeoffs to yield an unappetizing combination[.]” Op. at 12. The record also supported the determination that a nexus existed between Frymaster’s objective evidence of nonobviousness (awards for a fryer having a particular sensor) and the claims. While such sensors were known in the prior art, the Board did not err in determining that the awards were directed not just to the sensor, but the whole patented design.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (NO); WAIVER