United States District Court, D. Delaware
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
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
F.CONNOLLY UNITED STATES DISTRICT JUDGE
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. See D.I. 115.
thereafter filed a motion for summary judgment on
indefiniteness. D.I. 116. The motion has been fully
briefed. 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.
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.
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
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).
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)).
#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.
argue that the "resembling a pan-fried bacon
product" language renders the #610 patent indefinite.
claims do not define or otherwise clarify the scope of the
disputed term. The patent's written
description 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 [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
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.
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 that shed light on, let alone define or
describe, the texture, mouth feel, bite, appearance, or color
of pan-fried bacon. 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 ...