In Henny Penny Corp. v. Frymaster LLC (Fed. Cir. 2019), the Federal Circuit again upheld the PTAB’s application of its rule prohibiting petitioners from raising new arguments in a reply brief, and upheld the challenged claims as not unpatentable for obviousness, relying in part on secondary considerations evidence.

Henny Penny filed an IPR petition challenging a Frymaster patent covering commercial deep fryers. The challenged claims recite a system for monitoring frying oil impurities know as total polar materials (“TPMs”).The system includes a sensor for monitoring TPM levels, and notifies the operator to change the oil when TPM levels are too high. The petition relied on two references: (1) Kauffman, which discloses an apparatus for analyzing used oils, but does not monitor TPMs; and (2) Iwaguchi, which discloses monitoring TPMs in deep fryers. Unlike Kauffman, the Iwaguchi apparatus cools the cooking oil before detecting impurities. The petition argued that the claims were obvious because a person of ordinary skill would have been motivated to modify the teachings of Kauffman by replacing its oil analyzer with the Iwaguchi TPM sensor.

In reply to the patent owner’s opposition, the petitioner raised a new obviousness argument, based on a single reference, relying on deposition testimony of Frymaster’s expert to argue that the Kauffman sensor itself could be modified to detect TPMs.

In its final decision, the PTAB disregarded the new obviousness argument, and upheld the patentability of the challenged claims, on the basis that the skilled person would not have been motivated to substitute the Iwaguchi sensor, which would have required “additional plumbing and complexity,” leading to “decreased efficiency.” The PTAB also relied on evidence of secondary considerations of nonobviousness, including industry awards that Frymaster received for its commercial fryers embodying the claimed invention. Both awards specifically referred to the integrated TPM sensors included in the products.

On appeal, the court determined that the PTAB did not abuse its discretion in applying its rule prohibiting new arguments in reply, thus holding the petitioner “to the obviousness theory in its petition.” The result is similar to other cases we have discussed that upheld prohibiting new reply arguments (see here), permitting only “rebuttal” arguments not raised in the petition (see here). This case is another reminder that the PTAB may refuse to consider a new obviousness theory not raised in the petition.