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HIP, Inc. v. Hormel Foods Corp.

United States District Court, D. Delaware

June 24, 2019

HIP, INC., Plaintiff,

          Karen Jacobs, Michael J. Flynn, MORRIS, NICHOLS, Arsht & TUNNELL LLP, Wilmington, Delaware; Jerry R. Selinger, Susan E. Powley, PATTERSON Sheridan LLP, Dallas, Texas; B. Todd Patterson, Patterson Sheridan LLP, Houston, Texas; Dennis Brown, BROWN PATENT Law, P.L.L.C, Broken Arrow, Oklahoma Counsel for Plaintiff

          David E. Moore, Bindu A. Palapura, Stephanie E. O'Byrne, POTTER ANDERSON & CORROON LLP, Wilmington, Delaware; Kurt J. Niederluecke, Timothy M. O'Shea, Laura L. Myers, Barbara Marchevsky, FREDRIKSON & BYRON P.A., Minneapolis, Minnesota Counsel for Defendants




         Plaintiff HIP, Inc. sued Defendants for infringing U.S. Patent Number 9, 510, 610 (the "#610 patent"). Defendants alleged as counterclaims that the #610 patent is invalid due to indefiniteness and unenforceable due to inequitable conduct and incorrect inventorship. I permitted Defendants to move on an expedited basis for summary judgment on its counterclaim that the #610 patent is indefinite and consequently invalid under 35 U.S.C. § 112.[1] See D.I. 115.

         Defendants thereafter filed a motion for summary judgment on indefiniteness. D.I. 116. The motion has been fully briefed.[2] Both sides see fit to treat it as a motion for summary judgment even though they dispute certain facts, agree that it is within my discretion to make any subsidiary factual findings necessary to resolve the issue of indefiniteness, and rely on competing expert testimony adduced at a hearing on Defendants' motion. See Tr. of May 22, 2019 Hr'g at 6:10-13; 11:9-11; see also Tr. of Apr. 9, 2019 Hr'g at 80:16-17, 81:6-8. Federal Circuit decisions appear to confirm that I may grant summary judgment based on indefiniteness even when the parties present conflicting expert testimony about whether a person of ordinary skill in the art (POSITA) would be able to understand disputed claim terms. See, e.g., Capital Sec. Sys., Inc. v. NCR Corp., 725 Fed.Appx. 952, 958-59 (Fed. Cir. 2018) (affirming district court's decision granting summary judgment of indefiniteness despite expert testimony that a POSITA would understand the disputed claim term with reasonable certainty); cf. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008) (affirming grant of summary judgment of indefiniteness based on intrinsic evidence and noting in dictum that conflicting expert testimony does not preclude a finding of indefiniteness). Accordingly, I will treat Defendants' motion as a summary judgment motion.

         I have studied the parties' briefing and weighed the testimony of the parties' experts. For the reasons discussed below, I will grant Defendants' motion and declare the #610 patent to be invalid under § 112.


         A. Summary Judgment

         Under Federal Rule of Civil Procedure 56(a), "[t]he court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). In normal circumstances, on summary judgment, "the facts asserted by the nonmoving party, if supported by affidavits or other evidentiary material, must be regarded as true," Aman v. Cort Furniture Rental Corp., 85 F.3d 1074, 1080 (3d Cir. 1996), and "the Court is not permitted to weigh the testimony of the competing experts and draw its own conclusion[]" HSMPortfolio LLC v. Elpida Memory Inc., 160 F.Supp.3d 708, 727 (D. Del. 2016). In this case, however, the parties have stipulated that I can make subsidiary factual findings and weigh the testimony of their respective experts in deciding whether, as a matter of law, the #610 patent is indefinite.

         B. Indefiniteness

         "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. BiosigInstruments, Inc., 572 U.S. 898, 901 (2014). "While a claim term employing a term of degree may be definite where it provides enough certainty to one of skill in the art when read in the context of the invention, a term of degree that is purely subjective and depends on the unpredictable vagaries of any one person's opinion is indefinite." Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1381 (Fed. Cir. 2018) (internal quotation marks, alterations, and citations omitted).

         "Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction." Praxair, Inc. v. ATM, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008), abrogated on other grounds by Nautilus, Inc. v. BiosigInstruments, Inc., 572 U.S. 898, 901 (2014) (rejecting Federal Circuit's "insolubly ambiguous" standard for indefiniteness). As in claim construction, in making an indefiniteness determination, the district court may make "any factual findings about extrinsic evidence relevant to the question, such as evidence about knowledge of those skilled in the art, [which] are reviewed for clear error." See BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). "Any fact critical to a holding on indefiniteness ... must be proven by the challenger by clear and convincing evidence." Cox Commc 'ns, Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224, 1228 (Fed. Cir. 2016) (alteration in original) (quoting Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir. 2003)).


         The #610 patent is directed to a method of producing a pre-cooked sliced bacon product on an industrial scale. A preamble to claims 1 and 3 recites "[a] process ... to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product." The preamble applies to each of the patent's three claims, as claim 2 depends from claim 1. During claim construction, the parties disputed whether the preamble limits the scope of the claims. I adopted HIP's position that the preamble is limiting. See Tr. of Apr. 9, 2019 Hr'g at 62:11-63:24.

         Defendants argue that the "resembling a pan-fried bacon product" language renders the #610 patent indefinite.

         The claims do not define or otherwise clarify the scope of the disputed term. The patent's written description[3] provides two potential bases for determining whether precooked bacon "resembl[es]... pan-fried bacon." First, the written description teaches that there are five "significant organaleptic[4] [sic] differences between the product produced by a continuous microwave process versus a traditional home-fried product... [and t]hus, [that] the microwave product has a significantly different texture, mouth feel, bite, appearance, and color [from a 'home-fried' or 'pan-fried' product]." #610 patent at 1:49-56; see also Id. at 1:22-26 ("The continuous bacon cooking processes heretofore used in the industry have not been able to provide precooked sliced bacon products having the same texture, bite, mouth feel, color, and appearance as pan-fried products cooked in the home."); id. at 2:29-33 ("Moreover, the inventive bacon cooking process will produce a consistent product which does not have burned or blackened outer edges and is much closer than a microwaved product to home-fried bacon.").

         The patent's specification, however, does not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. Nor does the specification identify objective criteria to distinguish pan-fried bacon from microwaved bacon.

         When asked if the patent's written description taught "how to evaluate the[] five [organoleptic] characteristics to determine if a bacon product resembles a pan-fried bacon product," HIP's expert, Mr. Corliss, testified that "[t]here is no specific instruction because [the patent] relies on the person of ordinary skill to do that." Tr. of May 22, 2019 Hr'g at 177:6-11. Mr. Corliss, however, could point to no standards within (or even outside) the art of food processing systems and processes[5] that shed light on, let alone define or describe, the texture, mouth feel, bite, appearance, or color of pan-fried bacon.[6] Nor was he able to articulate in a meaningful or helpful way what the texture, mouth feel, bite, appearance and color of pan-fried bacon are:

Q. ... So there are five attributes that the patent discusses, texture, bite, mouth feel, appearance and color; is that correct?
A. Who discusses that?
Q. In the patent?
A. Oh, okay. Yes.
Q. What does bite mean?
A. Some people refer to that's a ...

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