NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

STEUBEN FOODS, INC.,

Appellant

v.

KATHERINE K. VIDAL, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2020-1083

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2014-

01235.

______________________ 

Decided: August 16, 2023 

______________________ 

WILLIAM COOK ALCIATI, Gardella Grace PA, Washington, DC, for appellant.

 DANIEL KAZHDAN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, for 

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2 STEUBEN FOODS, INC. v. VIDAL

intervenor. Also represented by THOMAS W. KRAUSE,

MONICA BARNES LATEEF, FARHEENA YASMEEN RASHEED. 

______________________ 

Before PROST, HUGHES, and CUNNINGHAM, Circuit Judges.

HUGHES, Circuit Judge. 

Steuben Foods, Inc. appeals from the Patent Trial and 

Appeal Board’s final written decision on remand determining that claims 18 and 19 of U.S. Patent No. 6,945,013 are 

unpatentable. For the following reasons, we affirm. 

I 

This case stems from an inter partes review brought by 

Nestlé USA, Inc. challenging claims 18, 19, and 20 of the 

’013 patent. The challenged claims recite methods for 

“aseptically bottling aseptically sterilized foodstuffs.” ’013 

patent at claims 18–20. The Board issued a final written 

decision finding the challenged claims not unpatentable as 

obvious. Nestlé appealed, and we vacated the Board’s decision for applying an incorrect claim construction of the 

term “aseptic.” Nestlé USA, Inc. v. Steuben Foods, Inc., 686 

F. App’x 917, 920 (Fed. Cir. 2017). Specifically, we held that 

“aseptic” as used in the ’013 patent is consistent with the 

U.S. Food and Drug Administration’s definition of “commercial sterility” set forth in 21 C.F.R. § 113.3. Id. at 919.

Neither the parties nor the Board proposed this construction during IPR. We remanded the case for the Board to 

apply the correct construction. Id. at 920. 

On remand, Steuben requested an opportunity for additional briefing under the new claim construction. The

Board denied this request, reasoning that Steuben was on 

notice of this court’s construction of “aseptic” and that our 

construction of the term resolved the arguments Steuben 

had presented. The Board then issued its final written decision on remand and concluded that claims 18 and 19 are 

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STEUBEN FOODS, INC. v. VIDAL 3

unpatentable as obvious and that claim 20 is not unpatentable as obvious.

Steuben appeals the obviousness determination as to 

claims 18 and 19.1 We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4).

II

“We review the Board’s ultimate obviousness determination de novo and underlying factual findings for substantial evidence.” Celgene Corp. v. Peter, 931 F.3d 1342, 1349 

(Fed. Cir. 2019) (citation omitted). “Substantial evidence 

. . . means such relevant evidence as a reasonable mind 

might accept as adequate to support a conclusion.” Id. (citations omitted).

III 

 Steuben’s challenges on appeal pertain to the requirement, found in both claims 18 and 19, that the claimed 

methods “aseptically disinfect[] the bottles at a rate 

greater than 100 bottles per minute.” ’013 patent at 

claims 18, 19 (emphasis added). Regarding the requirement that disinfection be done “aseptically,” Steuben argues that the Board failed to make any findings that the 

prior art disclosed or rendered obvious sterilizing bottles to 

meet the FDA’s commercial sterility requirements. Relatedly, Steuben also argues that the Board violated the Administrative Procedures Act by denying Steuben’s request 

to submit evidence and briefing related to the definition of 

“aseptic” we articulated in Nestlé. 

In its final written decision on remand, the Board 

acknowledged the claim construction for aseptic we articulated in Nestlé but did not directly address the construction

1 We granted Steuben’s motion to dismiss Nestlé 

from this appeal following a settlement between the two 

entities. See ECF No. 64.

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4 STEUBEN FOODS, INC. v. VIDAL

in its unpatentability analysis. In this case, we conclude, 

based on the factual findings the Board made, that the 

prior art references render obvious the aseptic limitation of 

claims 18 and 19. 

Specifically, the Board found that the aseptic limitation was taught by the prior art reference Biewendt because it discloses that milk was “filled under aseptic 

conditions” and because Biewendt’s milk “did not have any 

negative changes after 15 days of storage at 30 °C and had 

less than 10 germs per 0.1 cm3.” J.A. 33–34 (citations omitted). The FDA’s requirement for commercial sterility, on 

the other hand, requires the elimination of microorganisms 

“having public health significance, as well as microorganisms of nonhealth significance, capable of reproducing in 

the food under normal nonrefrigerated conditions of storage and distribution.” 21 C.F.R. § 113.3(e)(2). 

The Board supported its findings with substantial evidence, specifically quotations from and citations to the 

prior art. Additionally, the ’013 patent recognizes that 

prior art methods practiced the aseptic limitation. ’013 patent at 1:32–34 (“Several packaging techniques, including 

extended shelf life (ESL) and aseptic packaging, have 

been developed to increase the shelf life of low acid products.” (emphasis added)). 

These facts are enough to render obvious sterilizing 

bottles to meet the FDA’s requirements for commercial sterility. We therefore affirm that portion of the Board’s decision.2 

2 Although we affirm the Board’s decision, we note 

that the better course of action might well have been for 

the Board to allow the parties to submit supplemental 

briefing regarding the correct claim construction and then 

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STEUBEN FOODS, INC. v. VIDAL 5

Steuben also argues that substantial evidence does not 

support the Board’s finding that it would have been obvious 

to increase Biewendt’s sterilization rate of 100 bottles per 

minute to at least 101 bottles per minute. Steuben argues 

that the Board relied on conclusory expert testimony in 

reaching this conclusion and ignored the testimony of 

Steuben’s own declarant. In this case, the Board relied on 

expert testimony and the prior art to make its findings. See

J.A. 27–33. That is substantial evidence in support of the 

Board’s conclusion, which, consequently, we affirm. 

IV 

We have considered Steuben’s remaining arguments 

and find them unpersuasive. For the foregoing reasons, we 

affirm.

AFFIRMED

COSTS

No costs.

explicitly analyze the prior art in the context of that construction. The Board should be mindful of that in future 

cases.

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