Patent Law

Biocide

By Gary Odom and Jordan Kuhn

To sanitize meat, processors directly apply biocides. To that end, Ecolab got 6,010,729, 6,103,286, and 6,113,963, which it asserted against competitor FMC. FMC counterclaimed 5,632,676. A jury found some of Ecolab's asserted claims invalid, while FMC's '676 withstood validity challenge. Both infringed the other's surviving claims, FMC willfully so. Reasonable royalties to both. Post-trial motions of non-infringement by Ecolab and invalidity by FMC were shunted by the district court, and so appeals from both.

Ecolab v. FMC (CAFC 2008-1228, -1252)

Ecolab and FMC sell chemical products used by beef and poultry processors to reduce pathogens, such as E. coli and salmonella, on uncooked beef and poultry.

One of Ecolab's two beefs was limiting FMC's '676 claims to being the sole antimicrobial agent by prosecution estoppel and by the limiting use in claims of "consists essentially of" rather than the more expansive "comprising."

As this court has noted, "since, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover, he is by implication surrendering such protection." Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997). However, we will find that the applicant disclaimed protection during prosecution only if the allegedly disclaiming statements constitute "a clear and unmistakable surrender of subject matter." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1251 (Fed. Cir. 2000). Even if an isolated statement appears to disclaim subject matter, the prosecution history as a whole may demonstrate that the patentee committed no clear and unmistakable disclaimer. Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1372-73 (Fed. Cir. 2007).

[A] reasonable reader of this prosecution history could conclude that FMC's initial statements that PAA is the sole antimicrobial agent used in its claimed method were hyperbolic or erroneous, that the Examiner corrected FMC's error in the following communication, that FMC recognized its error and never again repeated or relied upon the erroneous rationale, and that the claims were allowed for reasons independent of the allegedly disclaiming statements. Thus, when FMC's statements are considered in the context of the prosecution history as a whole, they simply are not clear and unmistakable enough to invoke the doctrine of prosecution history disclaimer.

Ecolab argues that FMC cannot rely on the claims' "consists essentially of" language because the '676 patent disclosure and prosecution history clearly altered the meaning of that language. While "consisting essentially of" usually "signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention," PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998), Ecolab correctly notes that a patentee can alter that typical meaning, see id. at 1355 (stating that a patent applicant "could have defined the scope of the phrase 'consisting essentially of' for purposes of its patent by making clear in its specification what it regarded as constituting a material change in the basic and novel characteristics of the invention"); see also Water Techs. Corp. v. Calco, Ltd., 850 F.2d 660, 666 (Fed. Cir. 1988) (looking to the prosecution history to determine if a specified ingredient was excluded from a "consisting essentially of" claim). Specifically, Ecolab argues that the '676 patent clearly limits the claim scope to compositions containing PAA as the sole antimicrobial agent because all the examples in the '676 patent use PAA as the only antimicrobial agent. We find that argument unpersuasive. The patent examples describe compositions that contain agents other than PAA, such as hydrogen peroxide, acetic acid, or sulfuric acid. See, e.g., '676 Patent col.2 ll.27-31, col.4 ll.13-14, col.5 ll.13-14.

Ecolab's other beef was how "sanitize" was construed: non-infringement because the '676 disclosure specified "sanitize" as "safe for...  consumption." In other words, cooking was required by definition.

The '676 patent claims are directed to a "method for sanitizing fowl," '676 Patent col.10 l.15, and the patent explicitly states that the term "sanitize" "denote[s] a bacterial population reduction to a level that is safe for human handling and consumption," id. at col.2 ll.10-12. Thus, Ecolab argues that Inspexx cannot infringe the '676 patent claims because it does not and cannot make raw poultry safe for human consumption; cooking is required. The district court instructed the jury that, in the context of the '676 patent, the "sanitized" meat was not necessarily safe for human consumption immediately after treatment with PAA; the "sanitized" meat was not safe for consumption until it was cooked. Thus, Ecolab argues that "[b]y incorporating a subsequent 'cooking' element into the term 'sanitize,' the district court overrode the express definition of 'sanitize' set forth in the '676 patent."

The CAFC found Ecolab's argument a bit raw.

It is well-settled that an inventor may act as his own lexicographer to define a patent term, Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc), as FMC clearly chose to do here--notably failing to state that the invention can make poultry safe for consumption only after it is cooked. It is likewise well-settled that courts generally may not re-draft claims; we must construe the claims as written. Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004).

In the present case, the definition of "sanitize" is ambiguous in that it does not indicate when consumption is to take place--the definition does not indicate whether the consumption would occur immediately after application of PAA or, for example, at a later time after the meat is cooked.

Ecolab denied.

By contrast, FMC cooked. It argued anticipated by a prior art publication by Labadie. The CAFC began with false humility.

Because that is a factual finding, Advanced Display Sys., 212 F.3d at 1281, we will not overturn it so long as it is supported by substantial evidence in the record, United States v. Vertac Chem. Corp., 453 F.3d 1031, 1039 (8th Cir. 2006). We will "not substitute our judgment for that of the jury simply because there are other reasonable possibilities." United States v. Wells, 721 F.2d 1160, 1162 (8th Cir. 1982). However, we cannot uphold the jury's verdict here because it is not supported by substantial evidence.

FMC bore the burden of demonstrating that claim 7 is anticipated. As we have explained:

Evidence of invalidity must be clear as well as convincing. Typically, testimony concerning anticipation must be testimony from one skilled in the art and must identify each claim element, state the witnesses' interpretation of the claim element, and explain in detail how each claim element is disclosed in the prior art reference.

Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002). FMC met that burden here. Specifically, FMC presented expert testimony from Professor Russell that addressed each claim element and showed how each element was disclosed in Labadie.

Ecolab's plea that undue experimentation would have been required was sprayed down.

Under well-established law, "[t]hat which would literally infringe if later in time anticipates if earlier than the date of invention." Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir. 1987) (emphasis omitted). For the reasons discussed above, it is clear that if one were to now practice the PAA treatment step of the Labadie method, he would infringe Ecolab's claim 7. The evidence cannot reasonably support a different conclusion. Thus, we reverse the district court's denial of JMOL because the jury's verdict is not supported by substantial evidence.

Other claims were found obvious. The missing element in the cited references was spraying with a pressure of "at least 50 psi," which Ecolab's expert acknowledged was known in the prior art.

First, "there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." See KSR, 127 S. Ct. at 1741... Second, the person of ordinary skill would have known how to make this combination. Finally, the claims are invalid as obvious because the combination of the high pressure treatment disclosed in the Bender patent with the methods disclosed in FMC's patent is merely the combination of familiar elements to yield predictable results. See id. at 1739 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.").

Both parties had requested permanent injunctions. Ecolab's patents had been charred, so only FMC had any steak to sizzle.

To obtain injunctive relief, the plaintiff must demonstrate "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction." eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).

Here, the district court failed to consider any of the eBay factors and failed to make any factual findings regarding those factors. That is an abuse of discretion.

Affirmed-in-part, vacated-in-part, reversed-in-part, and remanded.

Raising animals for slaughter is environmentally unfriendly. Consuming animal meat is polluting to the human system.

Full post as published by The Patent Prospector on June 10, 2009 (boomark / email).