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KIM v. DAWN FOOD PRODUCTS

October 12, 2004.

YOON JA KIM, Plaintiff,
v.
DAWN FOOD PRODUCTS, INC., Defendant.



The opinion of the court was delivered by: AMY J. ST. EVE, District Judge

MEMORANDUM OPINION AND ORDER

Pro se*fn1 Plaintiff Yoon Ja Kim ("Kim") filed a four count complaint against Defendant Dawn Food Products, Inc. ("Dawn"), alleging breach of contract (Count I), fraud*fn2 (Count II), trade secret misappropriation (Count III), and infringement of United States Patent No. Re. 36,355 ("the '355 patent") (Count IV).

In response, Dawn asserts the following affirmative defenses:*fn3 Count III is barred by the statute of limitations; the '355 patent is invalid under 35 U.S.C. §§ 102, 103; and the '355 patent is invalid for indefiniteness under 35 U.S.C. § 112. Dawn further seeks a declaratory judgment that Dawn does not infringe the '355 patent (Counterclaim I), and a declaratory judgment that the '355 patent is invalid under 35 U.S.C. §§ 102 and 103 (Counterclaim II).*fn4

  For the reasons stated herein, the Court grants summary judgment of noninfringement (Count IV), and grants Dawn's motion for declaratory judgment of noninfringment (Counterclaim I). Counterclaim II, Dawn's summary judgment motion as to invalidity, and the affirmative defenses as to invalidity are denied as moot. The Court declines to exercise supplemental jurisdiction over Kim's state law claims of breach of contract (Count I) and trade secret misappropriation (Count III). LEGAL STANDARD

  I. Summary Judgment

  Summary judgment is proper when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R. Civ. P. 56(c). A genuine issue of triable fact exists only if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Pugh v. City of Attica, 259 F.3d 619, 625 (7th Cir. 2001) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S. Ct. 2505, 2510 (1986)). The party seeking summary judgment has the burden of establishing the lack of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S. Ct. 2548, 2552 (1986). A party will successfully oppose summary judgment only if it presents "definite, competent evidence to rebut the motion." Equal Employment Opportunity Comm'n v. Roebuck & Co., 233 F.3d 432, 437 (7th Cir. 2000). The Court "considers the evidentiary record in the light most favorable to the nonmoving party, and draws all reasonable inferences in his favor." Lesch v. Crown Cork & Seal Co., 282 F.3d 467, 471 (7th Cir. 2002).

  II. Claim Construction

  A determination of patent infringement is a two-step process in which the Court first construes the claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). The factfinder then compares the properly construed claims to the accused device to determine, as a question of fact, whether all of the claim limitations are present in the accused device. Id. at 1454; Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed. Cir. 2004). The language of the claims is the starting point for all claim construction analysis, because it frames and ultimately resolves all issues of claim interpretation. Robotic Vision Sys., Inc. v. View Eng'g, Inc., 189 F.3d 1370, 1375 (Fed. Cir. 1999); Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). In construing an asserted claim, the analytical focus of the construction must begin, and remain centered, on the language of the claims themselves. Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1201-02 (Fed. Cir. 2002).

  In the absence of an express intent by the patentee to impart a novel meaning to a claim term, the words are presumed to take on the ordinary and customary meaning attributed to them by those of ordinary skill in the art. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). The Court may determine the ordinary and customary meaning of a claim term by reviewing a variety of sources, beginning with the intrinsic evidence consisting of the claim terms themselves, the written specification, drawings, and prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). The Court may consult dictionaries, encyclopedias and treatises to determine the ordinary meaning of a word. Texas Digital, 308 F.3d at 1202-03.

  III. Patent Infringement

  Because the ultimate burden of proving infringement rests with the patentee, an accused infringer seeking summary judgment of noninfringement may meet its initial burden either by providing evidence that would preclude a finding of infringement, or by showing that the evidence fails to establish a material issue of fact essential to the patentee's case. Vivid Tech., Inc. v. American Sci. & Eng'g, Inc., 200 F.3d 795, 807 (Fed. Cir. 1999). A court may grant summary judgment of noninfringement if, after viewing the alleged facts in the light most favorable to the patentee and drawing all justifiable inferences in the patentee's favor, there is no genuine issue as to whether the patent claims encompass the accused device. Novartis Corp. v. Ben Venue Labs. Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).

  "To prove infringement, the patentee must show that the accused device meets each claim limitation." Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1324 (Fed. Cir. 2003). This is known as the "All Elements Rule," See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S. Ct. 1040 (1997); Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935-36 (Fed. Cir. 1987) (en banc). Summary judgment of noninfringement is proper where there is no genuine issue as to whether the accused device lacks a single claim element or its equivalent. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1321 (Fed. Cir. 2003).

  "An accused device literally infringes a claim if every limitation recited in the claim appears in the accused device, i.e., the properly construed claim reads on the accused product exactly." Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1382 (Fed. Cir. 2000) (quoting Amhil Enters., Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996)). An accused device infringes a claim under the doctrine of equivalents if it performs substantially the same overall function, in substantially the same way, to produce substantially the same overall result as the claimed invention. Warner-Jenkinson, 520 U.S. at 40; Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S. Ct. 854, 856 (1950). BACKGROUND

  I. The '355 Patent

  Kim is the named inventor and holder of the '355 patent, which issued on October 26, 1999 as a reissue of United States Patent No. 5,510,129 ("the '129 patent"). Kim filed the application that ultimately issued as the '129 patent on September 19, 1994. The '129 patent issued on April 23, 1996. The '129 patent was a continuation-in-part of Patent Application Serial No. 147,995, which Kim filed on November 5, 1993 and has since abandoned.

  The '355 patent discloses a potassium bromate replacer comprising an ascorbic acid composition that acts as a slow acting oxidant in the breadmaking process. '355 patent, col. 3, Ins. 8-10. Potassium bromate, an oxidizing agent for bread dough, was once widely used in the breadmaking industry. Its use became less common, however, after the FDA discovered that it causes cancer in laboratory animals. The invention of the '355 patent serves as a substitute for potassium bromate.

  II. The Disputed Claims

  Kim alleges that Dawn manufactures various bread mixes that infringe Claims 5, 6, 7, 8, and 10 of the '355 patent. Dependent Claims 6, 7, and 8 depend from Claim 5. Accordingly, Claims 6, 7, and 8 contain all of the limitations of Claim 5. 35 U.S.C. § 112, ¶ 4.

  Claim 5 recites:
A potassium bromate replacer composition consisting essentially of, by weight:
(a) about 0.001 to 0.03 parts ascorbic acid as an oxidant per 100 parts flour;
(b) about 0.015 to 0.2 parts food acid per 100 parts flour, said food acid selected from the group consisting of acetic acid, citric acid, fumaric acid, lactic acid, malic acid, oxalic acid, phosphoric acid, succinic acid, tartaric acid, fruit juice, fruit juice concentrate, vinegar, wine, and mixtures thereof; and
(c) flour.
'355 patent, col. 8, Ins. 47-57.

  Dependent Claim 6 recites: "The composition of Claim 5, wherein said food acid slows down oxidation of ascorbic acid to dehydroascorbic acid during a manufacturing process of yeast-leavened products." '355 patent, col. 8, Ins. 58-61.

  Dependent Claim 7 recites: "The composition of Claim 5, wherein said ascorbic acid acts as a slow acting oxidant that is functional throughout the entire manufacturing process ...


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