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Will 'Steuben patents' dampen growth of aseptics in bottles?

As little as a year ago, informed observers were bullish on the growth of aseptically packaged low-acid beverages in plastic bottles. Now they’re not so sure.

Has the growth of aseptic packaging in bottles in the U.S. hit a snag? The recent Aseptipak Conference November 2-3 in Chicago would seem to indicate yes.


Produced annually by Schotland Business Research, the Aseptipak Conference traditionally features technology and product and market innovations likely to accelerate the growth of aseptic packaging. This year, however, the keynote presentation at the conference was a bit different. Organized by Business Development Associates (BDA; 301/951-3338), it was a panel discussion of the so-called “Steuben patents,” the assertion of which in the third quarter of 2010 threatens to significantly impede the growth of all aseptic packaging into bottles in the US. (See photos for more information on who participated in the panel discussion.)


In a study published in late 2010, BDA projected that the growth of aseptic packing of beverages in plastic bottles in the US would accelerate significantly in the three- to five-year time frame from 2010 through 2015. Our conclusion was based primarily on the growth prospects for the aseptic packaging of low acid beverages because the growth of high acid aseptic beverage packaging in the U.S. will be limited due to the existing extensive use of hot fill processing and the well-established chilled distribution system.


Similar projections had been developed and presented publicly by Chris Hoemeke and Mike Guidry, principals in the Mercury Consulting Group. Hoemeke has been following the development of the aseptic packaging market in the U.S. since 1999.


Unfortunately, in the same time frame as these enthusiastic projections were being published, a series of six patents (the “Steuben patents”) were issued and assigned to Steuben Foods by the U.S. Patent and Trademark Office (USPTO). Among other features that the patents claim as “inventive” is the process of “aseptically disinfecting [bottles] with hot atomized hydrogen peroxide.”


According to the complaints filed by Steuben when it initiated the law suits in November 2008, Steuben informed one supplier of aseptic processing equipment who allegedly was using this process to sterilize bottles (Oystar USA, Inc., who was marketing the “Hamba” equipment) of the existence of the Steuben patents, implying that Steuben believed that Oystar might be infringing one or more of the Steuben patents. In September 2009, Steuben sent a similar letter informing Shibuya Hoppmann Corporation of the existence of the Steuben patents. In September 2010, Steuben filed infringement suits against both Oystar (later incorporating Hamba specifically) and Shibuya.


Steuben did not move against any other suppliers of aseptic processing equipment that also use a hot spray of hydrogen peroxide to sterilize the inside of bottles. However, Steuben apparently has authorized (presumably by license) another equipment supplier, Stork Food & Dairy Systems, whose equipment uses the same sterilization process, to use the patented technology described by the Steuben patents. At the same time, Steuben also purchased a Stork aseptic processing line, which is now in operation at the Steuben facility in upstate N.Y.


Expert opinion
In order to discuss the potentially dramatic impact of these legal proceedings on the growth prospects for aseptic packaging in the U.S., BDA invited two experts to the Aseptipak podium, both of whom were uniquely qualified to discuss the intricacies and outcome of the current conflict. These experts were Chris Hoemeke of Mercury Consulting and Frank Bozzo, an intellectual property lawyer with the firm of Hultquist IP.


Our guiding intent in developing this discussion was to adhere to, and be limited by, the public record and the available legal pleadings.


The initial comments by Bozzo addressed the broad issue of exactly what a patent is, what rights an issued patent gives to the patentee, and what specific inventions claimed and patented by Steuben are critical to this discussion.
A patent is essentially an exchange. Specifically, in exchange for revealing an invention to the world in the form of a written application to the USPTO, if the invention is found by the USPTO to be novel and nonobvious, the applicant may receive the right for a period of time to prevent other parties from using the patented article or process and/or the right to license the use of the patented technology to third parties.


The patent examiner assigned by the USPTO to review a patent application will review USPTO records on issued patents or published patent applications, as well as other databases of articles and other publications, to determine if the invention truly is novel (i.e., was not already invented by someone else) and nonobvious (i.e., represents a significant inventive step over what has been done before). Once the patent examiner is satisfied the disclosed invention is thus worthy of a patent, the patent is issued and is presumed valid. (The validity of the patent may be later challenged either in a U.S. Federal Court or before the USPTO, but a significant showing is required to show that the patent should not have been issued.)

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