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KIM v. EARTHGRAINS COMPANY

January 10, 2005.

YOON JA KIM, Plaintiff,
v.
THE EARTHGRAINS COMPANY, n/k/a SARA LEE BAKING GROUP, INC., Defendant.



The opinion of the court was delivered by: MICHAEL MASON, Magistrate Judge

MEMORANDUM OPINION AND ORDER

Plaintiff Yoon Ja Kim ("Kim") charges defendant The Earthgrains Company — now known as Sara Lee Bakery Group, Inc. ("Sara Lee") — with infringing U.S. Patent No. Re. 36,355 ("'355 patent"), which covers an oxidizing agent for bread dough. Kim alleges that Sara Lee's sale of its Butter Top and D'Italiano brand breads infringes the '355 patent due to the amounts of ascorbic acid and food acid — such as vinegar — in the breads. The parties have submitted memoranda on the issue of construction of the patent's disputed claims. The court's construction of the claims at issue in this case is set forth below.*fn1 I. BACKGROUND

A. Breadmaking Chemistry

  We begin with a brief and admittedly rudimentary discussion of some of the chemistry at work in the breadmaking process.*fn2 There are two major proteins in wheat flour: gliadin and glutenin. Structurally, their molecules can be thought of as coiled or folded chains, stabilized by bonds between sulfur atoms, called disulfide bonds, on adjacent areas of the molecules. When the flour is kneaded or mixed with a liquid, the molecules are stretched, and these bonds, which are relatively weak, are broken. Then, while the dough is allowed to rest, the disulfide bonds can reform either within the gliadin and glutenin molecules, or between them. Bonding between the gliadin and glutenin molecules forms gluten. The gluten is the elastic type substance that allows the dough to trap gas bubbles, whether during rising or baking.

  As yeast cells ferment, they produce carbon dioxide, the gas that acts as the leavening agent in the dough. The volume of the dough increases as more and more of the gas is generated, and the dough is converted to a foam. As the bubbles of gas expand, the gluten is stretched into a film surrounding the bubble. During the first several minutes of baking, the production of carbon dioxide gas by the yeast cells is temporarily accelerated. In addition, the increased heat causes the gases already within the dough to expand. By the time baking is completed, the size of the gluten bubble has increased several fold, due to the elasticity of the gluten and the pressure of the expanding gases. As the confined gases and steam expand, the gluten stretches and holds in those gases. The resulting increase in volume is maintained until the temperature becomes hot enough to coagulate the proteins, which gives the gluten bubble its final, set structure, and the bread its desirable texture.

  B. Oxidizing Agents in Breadmaking

  The patent-in-suit is for a slow-acting oxidizing agent to be used in breadmaking. Oxidizing agents are employed in breadmaking to strengthen the gluten, thereby improving bread volume, texture, and symmetry. They do this by "encouraging" the formation of disulfide bonds. In addition to the disulfide bonding that strengthens gluten, sulfur atoms may also bond with hydrogen atoms, forming sulfhydril links. When they do, no disulfide link is possible. Oxidizing agents "strip" the hydrogen atoms from the sulfhydril links, thereby making more sulfur atoms available to form the gluten-strengthening disulfide bond.

  Oxidizing agents have varying rates of reaction and are spent at various stages of the breadmaking process: mixing, proofing, or baking. Fast acting agents, such as ascorbic acid, or vitamin C, are mainly functional during the mixing stage and somewhat functional during the proofing stage. By the baking stage, however, these agents are dissipated. Slow acting oxidizing agents continue to function throughout the proofing stage and into the early stages of baking.

  One such slow acting agent, and the one most commonly used until recently, is potassium bromate. Used as a flour improver, potassium bromate strengthens the dough and promotes higher rising, thereby increasing the volume of bread, and produces bread with a fine crumb — the non-crust part of bread — structure. It acts principally during late proofing and early baking, and it prevents the dough from falling when the dough is handled. Because it is an oxidizing agent, under the right conditions, it will be completely spent in the baking process. If too much is used, or the bread is not baked long enough or at a high enough temperature, however, a residual amount may remain. While the amount might be negligible, it is nonetheless a cause for concern because potassium bromate has been banned in several countries as a carcinogen. In California, state law requires potassium bromate to be listed on the label with a cancer warning. Even though some in the baking industry might dispute the effects of residual potassium bromate, then, the tide has turned against its use.

  C. Patent-in-Suit

  Kim's invention is designed to replace potassium bromate as a slow acting oxidizing agent. It comprises ascorbic acid, an effective amount of food acid,*fn3 and an optional phosphate. Kim claims to have discovered that a food acid added in an effective amount to ascorbic acid slows down the oxidation rate of ascorbic acid. Apparently, the food acid acts to deny ascorbic acid certain catalysts for oxidation for an initial period. Thereafter, the catalysts are released, and work to accelerate oxidation. Ascorbic acid acts as an oxidizing agent by reacting with atmospheric oxygen, thereby turning into dehydroascorbic acid and oxidizing the gluten of the dough. The rate of oxidation is accelerated by trace metal ions that are present in flour, such as iron or copper. Food acid acts as chelating agent. A chelate is a compound of a metal and a non-metal, usually a metal and something organic. When a food acid is added to a dough mix, it will form chelates with the iron or copper ions, rendering them inactive and unavailable to catalyze oxidation. Thus, the food acid acts to slow the oxidation rate of the ascorbic acid in the early stages of breadmaking by taking the iron and copper ions out of the equation. As the pH level in the dough decreases, the chelates break down, back into food acid and copper and iron ions. Once free, the copper and iron ions act as catalysts for the oxidation of the ascorbic acid into dehydroascorbic acid. In this way, the ascorbic acid is changed from a fast acting oxidant to a slow acting one that functions through out the breadmaking process.

  Kim filed an application for a patent on a "potassium bromate replacer" on November 5, 1993. She filed a second application on September 9, 1994, which was a continuation-in-part of her initial application. That application issued as U.S. Patent 5,510,129 ("'129 patent") on April 23, 1996. The '129 patent was then reissued on October 26, 1999, as U.S. Patent Re.36,355 ("'355 patent"). Kim contends Sara Lee's breads infringe claims 5 through 8 and 10 of the '355 patent. Claim 5 is directed to a slow acting ascorbic acid composition as a potassium bromate replacer and is referred to as "Replacer I." Claims 6 through 8 are dependent on claim 5. Claim 10 includes yeast food and is referred to as "Replacer II." Claim 5 reads:
5. 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 part 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.
Claim 10 reads:
10. 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 part 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,
(c) about 0.5 parts yeast food per 100 parts flour, and
(d) flour.
  The parties' dispute over the construction of the '355 patent is somewhat ill-defined, but seems to focus on three phrases from these claims: "potassium bromate replacer composition", "consisting essentially of", and "ascorbic acid." (Sara Lee's Claim Construction Brief, at 3). Notably, in Kim v. ConAgra Foods, Inc., Judge William T. Hart had occasion to construe the claims at issue here. See Kim v. ConAgra Foods, Inc., No. 01 C 2467 (N.D.Ill. May 22, 2003) 2003 WL 21222266, *7-9. Judge Hart's construction of the claims presents an additional, and difficult, issue in this Markman proceeding, as the parties argue over the preclusive effect, if any, of his interpretation. As such, the court must discuss not only the law applicable to patent claim construction, but address the parties' contentions regarding the preclusive effect of Judge Hart's claim construction, before finally arriving at its Markman ruling.

  II. CLAIM CONSTRUCTION STANDARDS

  In Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995), the Federal Circuit held, and the Supreme Court later affirmed, that it is the court's responsibility to construe the claims of patents as a matter of law for the jury. 52 F.3d at 979, aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). Claim construction is "the process of giving proper meaning to the claim language," the fundamental process that "defines the scope of the protected invention." Abtox, Inc. v. Exitron Corp., 122 F.3d 1019, 1023 (Fed. Cir. 1997). "[T]he language of the claim frames and ultimately resolves all issues of claim interpretation." Id.

  Claim construction starts with a fundamental principle: there is a "heavy presumption" that a claim term carries its ordinary and customary meaning. Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). The court's task of discerning this meaning involves perusal of the intrinsic evidence of record, including the claims, the drawings, the specification, and the prosecution history, if in evidence. Teleflex, 299 F.3d at 1324. The court may also consult dictionaries and treatises in its effort to establish the ...


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