Zumbro has not created a dispute of fact regarding the patent's distinction between gum and carrier.
3. The Inventors' Admissions Concerning the Specification's Silence about "Vegetable Gum" Constituting a "Particulate Carrier"
Merck contends that both Sander and Cook have admitted that Example 27 of the '938 specification does not teach that the food grade particulate carrier may be vegetable gum. Merck notes that both Sander and Cook denied that Example 27 provided support for the limitation recited in Claims 26 and 27 "wherein the food grade particulate carrier is a vegetable gum." At his deposition, Sander responded to the following questions posed by Merck's attorney:
Q. (Showing Sander Exhibit 104, which shows 100 percent gum was used.) This is the run you made for your patent?
Q. It's Exhibit 104. Where is the carrier?
A. There isn't any.
(Ex. E to Merck's 12(m) Non-Infringement Statement, at 467.) In another exchange, Sander replied to the following question:
Q. Do Examples 23-27 show gum used as a carrier?
(Id. at 471.) In his deposition, Cook responded similarly:
Q. All right. Can you find any of the examples where the carrier is stated to be a vegetable gum?
Q. You can't?
A. I don't believe so. There are no gums listed as carriers.
(Ex. K to Merck's 12(m) Non-Infringement Statement, at 193.)
Zumbro has not responded to Merck's interpretation of the inventors' admissions. Nor has Zumbro addressed Sander's admission that the paragraph in the specification defining "food grade particulate carrier" was presented "in contrast" to the preceding paragraph in the specification which defined "vegetable gum." In his deposition, Sander had the following exchange with Merck's attorney:
Q. All right. And in the preceding paragraph you define what you mean by vegetable gum, do you not?
A. The preceding paragraph, going back to the previous page?
Q. Yes, over on paragraph two. You contrast that with the carrier, do you not?
Q. All right. At that time you did not consider the carrier to be a gum, did you, at that time, when you filed your patent application?
A. To the best of my recollection, no.
(Ex. J to Merck's 12(m) Non-Infringement Statement, at 479, Ins. 16-25, 480, Ins. 1-2.) Merck suggests that this deposition testimony constitutes uncontroverted evidence that Sander clearly intended to express a distinction between the two particles discussed in the two separate paragraphs of the specification. (Merck's Non-Infringement Reply, at 14.)
In its 12(n) Statement, however, Zumbro does challenge the following statement in paragraph 30 of Merck's 12(m) Non-Infringement Statement:
No carrier was used in the experiment exemplified by Example 27 of the '938 patent.
Zumbro asserts as the basis for its dispute that "xanthan gum was used as a carrier." (Zumbro's 12(n) Non-Infringement Statement, P 30.) In support of this assertion, Zumbro cites to statements made by Z. Peter Sawicki, an attorney with Kinney & Lange, the law firm representing Zumbro in this suit. None of Sawicki's statements cited by Zumbro, however, support Zumbro's 12(n) assertion that xanthan was used as a carrier.
In any event, as pointed out by Merck, the statements by Sawicki, a "non-inventor," do not contradict the plain language of Example 27 or the corroborating admissions of both inventors. (Merck's Reply, at 11.) In International Harvester Co. v. Deere & Co., 478 F. Supp. 411 (D. Ill. 1979), vacated on jurisdictional grounds, 623 F.2d 1207 (7th Cir. 1980), the court held that no genuine issue of material fact was created by affidavits contradicting admissions of the inventors and the patent owner. In the present case, Sawicki's deposition testimony does not contradict the crucial testimony of the inventors and is thus even less capable of creating a genuine issue of material fact. Cf. D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1151 (Fed. Cir. 1983) (affidavits filed by plaintiff in effort to clarify inventor's deposition failed to contradict his crucial testimony that every step of the claimed method had been followed in producing sample emblems offered to prospective customers before critical date).
4. The Prosecution History of Claims 26 and 27
Merck contends, further, that Zumbro cannot rely on contradictory arguments in the prosecution history of Claims 26 and 27 to challenge the plain language of the specification or the admissions of the inventors to the contrary. Merck points out that more than a year and a half after the '938 patent was filed with the Patent Office, Sander and Cook (through their attorney Sawicki) filed an amendment on March 11, 1985 in response to the Patent Office's rejection of their earlier application. The amendment contained two newly added claims, Claims 26 and 27, which recite the limitation "wherein the food grade particulate carrier is vegetable gum." Merck notes that Attorney Sawicki informed the Patent Office that these additional claims did not constitute new matter because they had already appeared in the specification set forth in Example 27. In its motion and memorandum for summary judgment, Merck quotes from Sawicki's amendment:
Two new dependent claims, 29 and 30 [now 26 and 27] have been added to more clearly claim the applicant's invention, by pointing out that the food grade particulate carriers may be vegetable gum. Addition of these claims does not constitute new matter as support for these claims is found on pages 17 and 18 [now column 8] of the specification in Example 27.
(Ex. L to Merck's 12(m) Non-Infringement Statement, at 10.) Merck argues that this argument presented to the Patent Office contradicts Sander's subsequent testimony that "no carrier" was taught by Example 27. (Merck's Non-Infringement Motion, at 12.)
Zumbro denies that anything in the prosecution history limits the claims of the patent. Zumbro merely contends that Claims 26 and 27 expressly claim a process in which the food grade particulate carrier is vegetable gum.
Since Defendant admits that xanthan is a vegetable gum, Zumbro asserts, Defendant must also concede that Claims 26 and 27 expressly include a process in which the carrier is xanthan. (Zumbro's Non-Infringement Response, at 6.)
Merck responds that Zumbro has not rebutted the plain language of the specification and the admissions of both Cook and Sander. Contrary to the argument Zumbro made to the Patent Office, Merck continues, the specification of the '938 patent at Example 27 actually states under the column heading "Carrier Type" that the 100 percent xanthan gum product has "no carrier." (Id. at 8.) Zumbro does not dispute paragraph 15 of Merck's 12(m) Non-Infringement Statement:
Example 27 of the '938 patent states that "no carrier" was used in the example.
(Zumbro's 12(n) Non-Infringement Statement, P 15; Merck's 12(m) Non-Infringement Statement, P 15.) According to Merck, this portion of Example 27 directly contradicts Zumbro's argument to the Patent Office that Claims 26 and 27 did not present any new matter and that the term "food grade particulate carrier" could appropriately be deemed to include "vegetable gum." (Merck's Non-Infringement Reply, at 8.)
Merck further argues that since Claims 26 and 27 were allowed to issue based upon misrepresentations made to the Patent Office, these claims are invalid because they (1) added "new matter" not disclosed in the specification, in violation of 35 U.S.C. § 132,
and (2) are not supported by the specification, in violation of the written description requirement of 35 U.S.C. § 112.
(Merck's Non-Infringement Reply, at 10.)
Zumbro has not identified an evidentiary conflict in the record on this issue. It may not rely on mere denials or conclusory statements; accordingly, it has failed to raise a genuine issue of fact with regard to the prosecution history of Claims 26 and 27. SRI Int'l, 775 F.2d at 1116.
5. Cancelled Claim 17
Finally, Zumbro argues that the prosecution history supports an interpretation of the patent in which the term "food grade particulate carrier" may include xanthan gum. Zumbro refers to the language of a claim (Claim 17) from the original application that was subsequently cancelled. Cancelled Claim 17 concerned "an agglomerated particle comprising a structure of individual vegetable gum particles bound to each other and bound to food grade particulate material randomly interspersed among the gum particles. . . ." (Ex. P to Zumbro's 12(n) Non-Infringement Statement, at 21.) Zumbro regards as significant the absence of the term "carrier" from this claim. The omission of this term, Zumbro suggests, indicates that, at the time of filing of the original application, "the particulate material need not have performed any function other than be bound to the gum." (Zumbro's Non-Infringement Response, at 7.) Since xanthan gum particles "can be bonded to one another and carry one another," Zumbro proposes that the carrier can be xanthan. (Id. at 7-8.)
Merck responds that cancelled Claim 17 does not rebut the unequivocal admissions of both inventors that Example 27 does not support Claims 26 or 27, nor the plain language of Example 27 itself that "no carrier" was used. (Merck's Non-Infringement Reply, at 11-12.) Merck argues, further, that Zumbro cancelled Claim 17 because the Patent Office, during the prosecution history, had rejected the claim over the prior art Gidlow patent;
hence, Merck asserts, only those claims incorporating the "carrier" limitation were allowed to issue.
Zumbro's reliance upon cancelled Claim 17 does not appear to raise an issue of material fact. The claim does not contradict the inventors' admissions that Example 27 did not contemplate the use of vegetable gum as a food grade particulate carrier, nor does the claim challenge the express language of Example 27 stating that the 100 percent xanthan gum product had "no carrier."
The infringement motions present difficult legal questions regarding the proper interpretation of the meaning of claims and factual determinations of whether the properly interpreted claims encompass the accused process. Merck has submitted uncontroverted admissions of both inventors that none of the examples in the '938 patent specify the use of "vegetable gum" as a "food grade particulate carrier." Further, Zumbro has not disputed the admission in Example 27 stating that there is "no carrier" in the agglomeration of 100 percent xanthan gum. Zumbro suggests that a disputed issue of fact exists in regard to the interpretation of the term "food grade particulate carrier" in the specification; Zumbro contends over Merck's objection that xanthan gum (as characterized in Merck's technical publications) meets the "fine grain form" quality described in the specification. Zumbro has not explained, however, how resort to Merck's advertising claims genuinely rebuts the unequivocal admissions of the inventors that no carrier was used to agglomerate the 100 percent xanthan gum of Example 27. Merck has presented substantial support for a summary judgment in its favor on this issue. Because this Report recommends that summary judgment be granted in favor of Merck on another basis, and because the infringement motion raises complicated technical issues, no firm recommendation regarding this motion is made here.
This Report concludes that Defendant Merck has demonstrated that there are no disputes of material fact and that it is entitled to judgment as a matter of law on the issue of the validity of the '938 patent. Specifically, the inventors violated their obligation to disclose the "best mode" for carrying out the patented method. If this court affirms that recommendation, it need not consider issues relating to the remaining motions. If the court should consider the "on sale" issue, however, this Report recommends that the court conclude that Merck has not met its burden of establishing that Zumbro was guilty of commercial exploitation of its patented process prior to the critical date with regard to Run No. H132001, but that Merck has met the burden with respect to the sale of the Unifiber product in July 1982.
Finally, Zumbro's motion for summary judgment declaring that the patent is valid and that Merck has infringed must be denied. The objections set forth in Merck's own two invalidity motions require that Zumbro's motion be denied; further, Defendant Merck has presented additional evidence establishing disputes of material fact regarding the validity of the '938 patent. Zumbro itself has failed to present evidence sufficient to create a dispute of fact regarding Merck's contention that it has not infringed the patent. If the court reaches the infringement issue, it should grant summary judgment in favor of Defendant Merck on that issue.
Date: November 13, 1992
REBECCA R. PALLMEYER
United States Magistrate Judge