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March 25, 2004.

YOON JA KIM, Plaintiff, Counterdefendant,
CONAGRA FOODS, INC., a Nebraska corporation, Defendant, Counterclaimant

The opinion of the court was delivered by: WILLIAM HART, Senior District Judge


Plaintiff Yoon Ja Kim is the holder of U.S. Patent No. Re. 36,355 (the "`355 Patent"), which issued on October 26, 1999 as a reissue of U.S. Patent No. 5,510,129 (the "`129 Patent"). The `355 Patent is a patent for a potassium bromate replacer composition. Potassium bromate is an oxidizing agent for bread dough, but its use became less common after it was discovered to cause cancer in laboratory animals. Plaintiff's composition is a substitute for potassium bromate. In her Amended Complaint, plaintiff alleges that defendant ConAgra Foods, Inc. contributes to or induces infringement of the `355 patent by licensing others to produce certain breads under the ConAgra and Healthy Choice Page 2 brand name using formulas containing ascorbic acid, food acid, flour and/or other ingredients in the proportions set forth in Claims 5 and 10 of the `355 patent.*fn1 Presently pending is defendant's motion for summary judgment based on the `355 patent being invalid as violative of the recapture rule. Plaintiff cross moves for partial summary judgment dismissing the recapture defense.

On a motion for summary judgment,*fn2 the entire record is considered with all reasonable inferences drawn in favor of the nonmovant and all factual disputes resolved in favor of the nonmovant. Lesch v. Crown Cork & Seal Co., 282 F.3d 467, 471 (7th Cir. 2002); Hilt-Dyson v. City Of Chicago, 282 F.3d 456, 462 (7th Cir.), cert. denied, 537 U.S. 820 (2002); Schneiker v. Fortis Insurance Co., 200 F.3d 1055, 1057 (7th Cir. 2000); Augustine Medical, Inc. v. Progressive Dynamics, Inc., 194 F.3d 1367, 1370 (Fed, Cir. 1999). The burden of establishing a lack of any genuine issue of material fact rests on the movant. Outlaw v. Newkirk, 259 F.3d 833, 837 (7th Cir. 2001); Vivid Page 3 Technologies, Inc. v. American Science & Engineering, Inc. 200 F.3d 795, 806-07 (Fed. Cir. 1999); Wollin v. Gondert, 192 F.3d 616, 621-22 (7th Cir. 1999). The nonmovant, however, must make a showing sufficient to establish any essential element for which she will bear the burden of proof at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Billings v. Madison Metropolitan School District, 259 F.3d 807, 812 (7th Cir. 2001). The movant need not provide affidavits or deposition testimony showing the nonexistence of such essential elements. Celotex, 477 U.S. at 324. Also, it is not sufficient to show evidence of purportedly disputed facts if those facts are not plausible in light of the entire record. See NLFC, Inc. v. Devcom Mid-America, Inc., 45 F.3d 231, 236 (7th Cir.), cert. denied, 515 U.S. 1104 (1995); Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 1191 (Fed. Cir. 1993); Covalt v. Carey Canada, Inc., 950 F.2d 481, 485 (7th Cir. 1991); Collins v. Associated Pathologists, Ltd., 844 F.2d 473, 476-77 (7th Cir.), cert. denied, 488 U.S. 852 (1988).

  Section 251 provides in part:

  Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue. Page 4

 35 U.S.C. § 251. Section 251 incorporates the recapture rule which has been summarized as "prevent[ing] a patentee from regaining through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims." Pannu v. storz Instruments, Inc. 258 F.3d 1366, 1370-71 (Fed. Cir. 2001) (quoting In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)).

  The issue raised in the pending motions is whether, during the prosecution of the application for the `129 patent, plaintiff "surrendered" reissued Claims 5 and 10 of the `355 patent and therefore should not have been permitted to include them in the reissued `355 patent. "Surrender" must be understood in the context of the recapture rule as incorporated in § 251. The act of surrender is a deliberate act, Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 1484 (Fed. Cir.), cert. denied, 525 U.S. 947 (1998); Clement, 131 F.3d at 1468; Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995-96 (Fed. Cir. 1993); Ball Corp. v. United States, 729 F.2d 1429, 1435-36 (Fed. Cir. 1984); Haliczer v. United States, 356 F.2d 541, 545 (Ct.Cl. 1966); Datascope Corp. v. Arrow International, Inc., 2001 WL 1045524 *9 (D.N.J. Aug. 17, 2001); Minuteman International, Inc. v. Critical-Vac Filtration Corp., 1997 WL 370204 *6 (N.D. Ill. June 27, 1997), aff'd by unpublished order, 152 F.3d 947 (Fed. Cir. 1998); California Medical Products, Inc. v. Tecnol Medical Products, Inc., 921 F. Supp. 1219, 1248 (D. Del. 1995), sometimes described as an act that essentially is an admission that the pertinent patent claim is not patentable. Hester, 142 Page 5 F.3d at 1481; Clement, 131 F.3d at 1469; Mentor, 998 F.2d at 995; Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); Datascope, 2001 WL 1045524 at *6. Surrender is an intentional act. Clement, 131 F.3d at 1469; Ball, 729 F.2d at 1435-36; California Medical, 921 F. Supp. at 1248. The statute uses the term "error." In order to qualify for reissue, the pertinent omission from the originally issued patent must have resulted from error. In contrast with surrender, which must be deliberate and intentional, "error" has been construed as being synonymous with the prior statutory language of "inadvertence, accident, or mistake." In re Doyle, 293 F.3d 1355, 1359 (Fed. Cir. 2002); Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d 1556, 1565 (Fed. Cir. 1989), cert. denied, 493 U.S. 1076 (1990); Ball, 729 F.2d at 1435 & n.9. While deliberately cancelling or amending a claim will ordinarily constitute surrender, other evidence may show it was not an intentional relinquishment of the subject matter. Clement, 131 F.3d at 1469.

  Plaintiff's original patent prosecution included claims that did not have phosphate as an ingredient. No such claims were included in the `129 patent as issued. Claims without phosphate, including Claims 5 and 10 which are at issue, were included in the reissued `355 patent. Claims 5 and 10 also contain broader ranges of food acid than the claims contained in the `129 patent as issued. The question in dispute is whether the non-phosphate Claims and broader food-acid ranges omitted Page 6 from the `129 patent as issued were omitted due to "error" or were omitted because plaintiff "surrendered" them.

  Defendant contends that the intent element of surrender does not go to plaintiff's actual subjective intent. For this proposition, plaintiff relies on Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1575 (Fed. Cir. 1991), and the cases cited therein. See In re Weiler, 790 F.2d 1576, 1581 (Fed. Cir. 1986); In re Rowand, 526 F.2d 558, 560 (C.C.P.A. 1975). Those cases, however, concern the "intent to claim," which goes to the question of whether the reissue claim was or could have been included in the original patent application and therefore does not introduce new matter, which is prohibited by § 251. Those cases support the proposition that the reissue applicant does not have to show*fn3 the applicant's subjective intent to have included the reissue claims in the original patent, nor is the reissue applicant necessarily required to even show an objective intent to claim. See In re Amos, 953 F.2d 613, 617-19 (Fed. Cir. 1991). See also Hester, 142 F.3d at 1484-85. The intent to have included subject matter in the original application is different from any intent to remove (surrender) subject matter during the process of having a patent issue. Cf. Weiler, 790 F.2d at 1582 (distinguishing objective intent to claim aspect of error from deceptive intent aspect which is subjective). Page 7

  This does not mean that objective evidence of intent is irrelevant. The prosecution history must be examined for evidence of plaintiff's intent regarding the non-phosphate Claims being dropped from the `129 patent and the food acid range being narrowed. See Clement, 131 F.3d at 1469. The prosecution history may contain objective evidence from which plaintiff's intent may be inferred. "`[T]he court may draw inferences from changes in claim scope when other reliable evidence of the patentee's intent is not available,' Ball, 729 F.2d at 1436. Deliberately cancelling or amending a claim in an effort to overcome a reference strongly suggests that the applicant admits that the scope of the claim before the cancellation or amendment is unpatentable, but it is not dispositive because other evidence in the prosecution history may indicate the contrary." Clement, 131 F.3d at 1469.

  Defendant contends that the prosecution history is the only evidence that may be considered. The case law is not clear as to that issue. Clement indicates that the prosecution history is the primary source of evidence. See id. at 1469 ("To determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection."); Hester, 142 F.3d at 1480 (same); Datascope, 2001 WL 1045524 at *5. Cases also indicate that the public and competitors should be able to rely upon the prosecution history in determining what may have been preserved. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384 (Fed. Cir. 1998), cert. denied, Page 8 526 U.S. 1160 (1999); Hester, 142 F.3d at 1481; Mentor, 998 F.2d at 996; Datascope, 2001 WL 1045524 at *8. On the other hand, the cases refer to possible factual disputes regarding recapture. See Pannu, 258 F.3d at 1370; Hester, 142 F.3d at 1484; Mentor, 998 F.2d at 994; Clement, 131 F.3d at 1469; Datascope, 2001 WL 1045524 at *5; Minuteman, 1997 WL 370204 at *6. Some of these cases may simply refer to the possibility that more than one reasonable inference may be drawn from the prosecution history, not necessarily the possibility of submitting evidence from outside the prosecution history. Pannu, 258 F.3d at 1370, though, refers to reviewing district court findings for substantial evidence, which could be a reference to possible evidence outside the prosecution history.

  In Hewlett-Packard, the court considered evidence outside the prosecution history in determining whether there was an error permitting reissue, in particular whether the error was without deceptive intent. In that case, the court relied on notebooks of the patent agent that were presented at trial, but not part of the prosecution history. These notebooks conclusively proved the falsity of representations in the patent agent's affidavits which were a part of the prosecution history that was necessary to show an error had occurred. See Hewlett-Packard, 882 F.2d at 1561-62, 1566. These notebooks were also pertinent to possible inequitable conduct that occurred. See id. at 1561-63. Hewlett-Packard's consideration of the outside evidence is consistent with it being the Patent Office's general practice to accept representations of a lack of deceptive intent without conducting an independent Page 9 investigation of possible fraud or inequitable conduct. See 56 Fed. Reg. 37321, 37323 (Aug. 6, 1991). Issues as to fraud or inequitable conduct are instead considered by the courts. Plaintiff's current declaration is different. It is not an attempt by a nonparty to the reissue proceedings in which the nonparty tries to undermine representations that were left uninvestigated at the time the patent issued.*fn4 Instead, plaintiff's current declaration is an attempt by the applicant herself to bolster representations as to error and lack of deceptive intent that the applicant could have presented at the time of reissue. See 37 C.F.R. § 1.175. Allowing plaintiff to proceed in this manner would undermine the goal of having a prosecution history that can be relied upon by the public. See Vectra, 162 F.3d at 1384; Hester, 142 F.3d at 1481; Mentor, 998 F.2d at 996; Datascope, 2001 WL 1045524 at *8. No case involving recapture error has been cited or found which relies on a non-prosecution-history declaration or affidavit that goes to the type of issues contained in plaintiff's current declarations.

  Here, plaintiff has submitted her own current declarations which contain statements regarding plaintiff's state of mind during the prosecution of the patents. In a prior ruling permitting defendant to file a successive summary judgment motion raising recapture, it was expressly stated that, to the extent either party relied on evidence outside the prosecution history, Page 10 that party should cite case law supporting that such evidence may appropriately be considered. Kim v. ConAgra Foods, Inc., 2003 WL 22669035 *5 n.3 (N.D. Ill. Nov. 10, 2003) ("ConAgra III"). Plaintiff has presented no argument nor case law supporting that it is appropriate to consider such evidence. Therefore, plaintiff has waived the opportunity to present such evidence. Plaintiff's current declarations will not be considered to the extent they attempt to present evidence that is outside the prosecution history.

  It is also noted that both parties have provided declarations describing the prosecution history. To the extent those declarations simply verify the authenticity of the prosecution history documents that are provided, the declarations are accepted. There is no genuine dispute as to the authenticity of any prosecution history document that is provided. However, to the extent the declarations attempt to describe or analyze the content of the prosecution history, which occurs more often in plaintiff's declarations than defendant's, it is the prosecution history itself that establishes the prosecution history's contents. Regarding arguments as to how the prosecution history should be interpreted or facts that can be inferred from it, the court will look to the parties' briefs for their contentions, not the declarations. Additionally, the parties' Local Rule 56.1 statements of fact, particularly those of plaintiff, are not limited to factual statements and are incomplete. Both parties recite facts in their briefs which, although supported by citations to the prosecution history, are not facts that are Page 11 specifically recited in their Rule 56.1 statements. The court, however, will exercise its discretion to ignore the legal arguments contained in the Rule 56.1 statements and ...

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