from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. IPR2016-01435.
Marcel Sokal, Potomac, MD, argued for appellant. Also
represented by Kevin W. Kirsch, Baker & Hostetler LLP,
Cincinnati, OH; Donald E. Burton, Faruki Ireland Cox
Rhinehart & Dusing PLL, Dayton, OH.
Allen Loy, Kirkland & Ellis LLP, New York, NY, argued for
appellee. Also represented by Aaron D. Resetarits; Eugene
Goryunov, Chicago, IL; Jason M. Wilcox, Washington, DC.
Lourie, Chen, and Stoll, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
Penny Corporation ("HPC") appeals from the
inter partes review decision of the United States
Patent and Trademark Office Patent Trial and Appeal Board
(the "Board") holding claims 1-3, 5-12, 17-21, and
23 of U.S. Patent 8, 497, 691 (the "'691
patent") not unpatentable as obvious. Henny Penny
Corp. v. Frymaster L.L.C., No. IPR2016-01435, 2017 WL
6551237 (P.T.A.B. Dec. 21, 2017)
("Decision"). Because substantial evidence
supports the Board's findings and the Board properly
credited evidence of secondary considerations, we affirm.
case relates to deep fryers. During frying, cooking oil
gradually degrades and loses its cooking capacity, generating
impurities called total polar materials ("TPMs").
'691 patent col. 1 ll. 25-32. The '691 patent, owned
by appellee Frymaster LLC, describes a system for measuring
the state of cooking oil degradation with a TPM sensor. When
the sensor detects that TPM levels are too high, the system
instructs the fryer operator to change the oil. See
id. col. 4 ll. 53-55. The purpose of the TPM sensor is
to ensure that oil is neither "wasted by being
prematurely changed" nor "overused thereby tainting
food and harming consumers." Id. col. 4 ll.
of the '691 patent is representative and identifies two
relevant characteristics of the TPM sensor: (1) the sensor is
positioned within an adapter located between drain and return
pipes that circulate oil between the fryer pot and the
sensor; and (2) the sensor "measure[s] an electrical
property that is indicative of [TPMs] as the cooking oil
flows past [the] sensor and is returned to [the fryer
pot]." Id. col. 6 ll. 20-37. The claim reads in
full as follows:
1. A system for measuring the state of degradation of cooking
oils or fats in a deep fryer comprising:
at least one fryer pot;
a conduit fluidly connected to said at least one fryer pot
for transporting cooking oil from said at least one fryer pot
and returning the cooking oil back to said at least one fryer
a means for re-circulating said cooking oil to and from said
fryer pot; and
a sensor external to said at least on[e] fryer pot
and disposed in fluid communication with said conduit to
measure an electrical property that is indicative of total
polar materials of said cooking oil as the cooking oil flows
past said sensor and is returned to said at least one fryer
wherein said conduit comprises a drain pipe that transports
oil from said at least one fryer pot and a return pipe that
returns oil to said at least one fryer pot,
wherein said return pipe or said drain pipe comprises two
portions and said sensor is disposed in an adapter
installed between said two portions, and
wherein said adapter has two opposite ends wherein one of
said two ends is connected to one of said two portions and
the other of said two ends is connected ...