"on sale" bar of the Patent Act,
35 U.S.C. § 102 (b). Defendants The Amalgamated Sugar Co., LLC and
ARI have filed a Motion to Strike Plaintiff's (Third) Motion for
Reconsideration. Plaintiff then filed a Motion to Strike Defendants'
Motion to Strike, and the Court denied that motion on October 7, 2002.
For the reasons set forth below, Plaintiff's Renewed Motion for
Reconsideration (R. 167-1) is denied. Further, Defendants' Motion to
Strike (R. 170-1) is denied as moot.
On March 28, 2001, Judge Coar granted Defendants' motion for partial
summary judgment, holding that Patent No. 5,795,398 ("the '398 patent")
was invalid under the on sale bar. See Finnsugar Bioproducts, Inc. v.
Amalgamated Sugar Company, LLC, No. 97 C 8746, 2001 WL 303683 (N.D. Ill.
March 28, 2001) (hereinafter "Finnsugar I"). Plaintiff subsequently moved
for reconsideration of this order in light of Group One, Ltd. v. Hallmark
Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001), or, in the alternative, for
certification of the issue for appeal. On March 25, 2002, Judge Coar
denied that motion. See Finnsugar Bioproducts, Inc. v. Amalgamated Sugar
Company, LLC, No. 97 C 8746, 2002 WL 460812 (N.D. Ill. Mar. 26, 2002)
(hereinafter "Finnsugar II"). A detailed factual background of this case
is set forth in Judge Coar's opinions, and will not be reiterated here.
See Finnsugar I and Finnsugar II. On August 30, 2002, the case was
transferred from Judge Coar to this Court, and shortly thereafter,
Plaintiff filed a renewed motion for reconsideration, this time in light
of In re Kollar, 286 F.3d 1326 (Fed. Cir. 2002).*fn1
STANDARD OF REVIEW
As the party seeking reconsideration, Finnsugar bears a heavy burden.
The Seventh Circuit has repeatedly cautioned that "[m]otions for
reconsideration serve a limited function: to correct manifest errors of
law or fact or to present newly discovered evidence." Publishers
Resource, Inc. v. Walker-Davis Publications, Inc., 762 F.2d 557, 561
(7th Cir. 1985) (quotation omitted); see also In re Oil Spill by "Amoco
Cadiz" Off Coast of France on March 16, 1978, 794 F. Supp. 261, 267
(N.D. Ill. 1992) ("motions to reconsider are not at the disposal of
parties who want to `rehash' old arguments."). Accordingly, a court will
entertain a motion for reconsideration only where the moving party can
establish that the law or facts have changed significantly since the
issue was presented, or the court has "patently misunderstood a party,"
has "made a decision outside the adversarial issues presented," or has
"made an error not of reasoning, but of apprehension." Bank of Waunakee
v. Rochester Cheese Sales, 906 F.2d 1185, 1191 (7th Cir. 1990). Whether
to grant reconsideration is committed to the sound discretion of the
court. Cause Nationale de Credit v. CBI Industries, Inc., 90 F.3d 1264,
1270 (7th Cir. 1996).
Judge Coar previously granted Defendants' motion for partial summary
judgment finding that the '398 patent was invalid under the on sale bar.
Section 102(b) of the Patent Act of 1952 precludes a person from
patenting an invention that has been "on sale" more than one year. The
Supreme Court has articulated a two part test for determining the
of the on sale bar. "First, the product must be the subject
of a commercial offer for sale. . . . Second, the invention must be ready
for patenting. That condition may be satisfied in at least two ways: [a]
by proof of reduction to practice before the critical date, or [b] by
proof that prior to the critical date the inventor had prepared drawings
or other descriptions of the invention that were sufficiently specific to
enable a person skilled in the art to practice the invention." Pfaff v.
Wells Electronics, Inc., 525 U.S. 55, 61 (1998). Judge Coar found that
defendants had satisfied both of these elements. See Finnsugar I and
Finnsugar II. Plaintiffs now move this Court to reconsider the findings
on each of these elements.
A. In re Kollar
Plaintiff's principal basis for reconsideration is the opinion by the
Federal Circuit in In re Kollar, arguing that the Federal Circuit in
Kollar "changed the law pertaining to the on sale bar." (See R. 167-1,
Pl.'s Renewed Mot. for Reconsideration, at 1.) Specifically, Plaintiff
suggests that In re Kollar stands for the proposition that there is a
distinction between process claims and product claims and that merely
granting a license to an invention, without more, does not trigger the on
sale bar under 35 U.S.C. § 102 (b). (See R. 164-1 Pl.'s Mem. in
Support of Renewed Mot. for Reconsideration, at 7.)
As Defendants point out, however, In re Kollar did not actually "change
the law" regarding what constitutes an offer to sell sufficient to invoke
the on sale bar. To the contrary, the Federal Circuit's opinion expressly
recognized that its holding was based on precedent, including
Mass-Hamilton Group v. LaGard, Inc., 156 F.3d 1206 (Fed Cir. 1988). See
In re Kollar, 286 F.3d at 1330 ("We have held that merely granting a
license to an invention, without more, does not trigger the on-sale bar
of § 102(b).") (emphasis added; citing Mass-Hamilton Group). Thus, it
cannot be said that In re Kollar "changed the law" regarding the on sale
Moreover, earlier in this case, Plaintiff raised — and Judge Coar
rejected as distinguishable — several of the cases cited by the
Federal Circuit in In re Kollar. See, e.g., Finnsugar, 2001 WL 303683, at
*6 (distinguishing Mass-Hamilton). In re Kollar, therefore, does not
constitute adequate grounds for reconsideration.
B. The "Ready for Patenting" Issue
Plaintiff also suggests that reconsideration should be granted because
the M9B3 process underlying the '398 patent was not "ready for
patenting." Specifically, Plaintiff argues that this Court "erroneously
concluded that the invention was `ready for patenting,' because the
inventor had rendered a one page flow diagram of the M9B3 process . . .
[and] there was evidence . . . that further development work and
verification was done on the invention." (See R. 164-1 Pl.'s Mem. in
Support of Renewed Mot. for Reconsideration, at 10.) Judge Coar,
however, specifically rejected this argument as a basis for
reconsideration in his March 25, 2002 order, observing that "Finnsugar's
argument merely rehashe[d] old contentions rather than addressing
manifest error of law or fact or newly discovered evidence." Finnsugar
II, 2002 WL 460812, at *10.
In any case, as Judge Coar noted in his original Finnsugar I opinion,
it was undisputed that "example 3 of the '398 patent was successfully
performed in December 1993" and that the process was therefore "ready for
patenting." Id. at 7 (citing Pfaff v. Wells Electronics, 525 U.S. 55, 57
n. 2, 119 S.Ct. 304, 307 n. 2, 142 L.Ed.2d 261 (1998)). Plaintiff argues
that the process was not ready for patenting because additional
verification was required, citing
Space Systems/Loral, Inc. v. Lockheed
Martin Corp., 271 F.3d 1076, 1079 (Fed. Cir. 2001). But that case is
inapposite. Under Pfaff, a process is ready for patenting when it has
been reduced to practice or when the process has been depicted in
"drawings or other descriptions of the invention that were sufficiently
specific to enable a person skilled in the art to practice the invention
. . ." Pfaff, 525 U.S. at 67-68, 119 S.Ct. at 312. In Space
Systems/Loral, the Federal Circuit held that a process for maintaining
the position and orientation of satellites was not ready for patenting
where the process reflected "a bare conception that [had] not been
enabled." 271 F.3d at 1080. See also id. ("the patent statute requires an
enabling disclosure of how to make and use the invention.") (citing
Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.
In addition, Plaintiff's suggestion that further calculations and
verification were required (see R. 164-1 Pl.'s Mem. in Support of Renewed
Mot. for Reconsideration, at 10) is contradicted by the record evidence.
As the inventor himself testified, the process was successfully performed
in December 1993 and subsequent testing merely established that the
process performed better than expected. (See R. 93-1, Defs.'
Rule 56.1(a)(3) Statement, Hyoky Dep. at 148-149 ("Q. Is it your
understanding that the [December 1993] report showed that the process
performed as described in the report had been successful, correct? A. The
test had been successful. Q. Yes. And then when you went back and did the
recalculations, it actually showed that the results were even better, is
that correct? A. Yes.").
C. Entry of a Rule 54(b) Judgment
Finally, Plaintiff requests that the Court enter a final judgment on
invalidity under Rule 54(b) in order to permit an immediate appeal of
that issue. Plaintiff's only argument for reconsideration is that the
Federal Circuit has reversed seven of fifteen reported summary judgment
decisions finding patents invalid under the on sale bar and that a
decision by the Federal Circuit could affect the trial of the Defendants'
As Defendants explain, however, the overlap or relation between the
Court's finding that the '398 patent is invalid under the on sale bar and
Defendants' counterclaims actually counsels against entry of judgment
under Rule 54(b). See, e.g., Jack Walters & Sons Corp. v. Morton
Bldg., Inc., 737 F.2d 698, 701 (7th Cir. 1984) ("Our recent decisions
emphasize that trial judges do not have carte blanche to certify partial
dispositions for immediate appeal under Rule 54(b). . . . The rule itself
makes clear that a district judge may enter an appealable judgment only
if it disposes of a `claim for relief' that is `separate' from the claims
not disposed of").
Judge Castillo observed in McKenzie v. City of Chicago that "[t]his
court, just like the National Football League, has done away with the
concept of `instant replay.'" 968 F. Supp. 1268, 1272 (N.D. Ill. 1997).
Of course, the NFL later resurrected instant replay, but in its wisdom,
the NFL afforded teams only a limited number of replay challenges. Even
under the more relaxed rules that govern pro football, however, the Court
notes that Finnsugar would have exhausted its opportunities for further
review of this issue long ago.
Plaintiff's Renewed Motion for Reconsideration (R. 167-1) is denied.
Further, Defendants' Motion to Strike (R. 170-1) is denied as moot.