Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Kim v. The EarthGrain Co. k/n/a Sara Lee Bakery Group, Inc., No. 01 C 3895, Slip Op. (N.D. Ill. Feb. 4, 2011) (Cox, Mag. J).

Judge Cox construed the claims of plaintiff's patent to compositions of a potassium bromide replacement for bread, and granted defendant Sara Lee summary judgment of noninfringement. Of particular note, the Court construed the following terms, all in Sara Lee's favor:

• "A potassium bromated replacer composition, consisting of" as:

a mixture of ingredients that acts to perform essentially the same function when used in the production of bread as would potassium bromated, namely, acting as a slow acting oxidant in the bread making process to strengthen the dough, increase loaf volume, and contribute to fine crumb grain. The mixture of ingredients is limited to the claimed ingredients (ascorbic acid, food acid, and flour) in the claimed amounts based on the weights of the ingredients. The mixture cannot contain additional chemical ingredients beyond those listed.

• "Said food acid is present in an effective amount" as:

"Food acid" must be present in an amount that slows down the rate of oxidation of ascorbic acid to dehyroascorbic acid during a manufacturing process of bread.

• "Said food acid selected from the group consisting of acetic acid . . . vinegar . . ." as:

the food acid can either be vinegar or acetic acid. "Vinegar" is a sour liquid used as a condiment or preservative that is obtained by acetic fermentation of dilute alcoholic liquids or of dilute distilled alcohol. "Acetic acid" is an organic acid represented by the chemical notation C2H2O2.

• "Flour" as a "finely ground meal of wheat."

Having construed the claims, the Court held that Sara Lee's accused products did not infringe the asserted patent:

• The "consisting of" transitional phrase required that the claimed replacement could only have the claimed ingredients. But those ingredients could be mixed with other ingredients of the bread, as long as they were not part of the potassium bromide replacement.
   
• Sara Lee's products did not infringe because there was no evidence as to the amount of ascorbic acid in the accused bread. While a set amount was added in tablet form, the tablet would interact with water in the bread dough oxidizing the ascorbic acid and turning some of it into a non-infringing compound.
   
• Five of the six accused products also did not infringe because they had more vinegar in them than the claimed range.

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Kim v. The Earthgrains Co., No. 01 C 3895, Slip Op. (N.D. Ill. Feb. 18, 2010) (Cox, Mag. J.). 

Judge Cox granted defendant summary judgment, limiting plaintiff's potential damages to the date that the Patent Office issued plaintiff's reexamination certificate. During reexam, the transitional phrase in each of the claims at issue was revised from "consisting essentially of" to "consisting of." "Consisting essentially of" signals a partially open claim which can include non-claimed ingredients so long as they do not materially affect the claimed properties of the invention. "Consisting of," however, signals a closed claim limiting it to the listed elements, unrelated elements and unavoidable impurities. 

The defendant argued that the changed transitional phrases were substantive changes which limited the damages period to the period from the reexam certificate forward. The Court held that the changed transitional phrases was a substantive change. The plaintiff argued that the changed transitional phrases did not change the scope of her patents based upon plaintiff's research. But the Court held that the plaintiff had not shown that any element excluded from the original claims would have also been excluded from the reexamined claims. The Court also explained the scope of "consisting essentially of" as follows:

[A] formula which falls under a "consisting essentially of" claim may contain additional "active" ingredients not listed in the claim, as long as the additional active ingredients do not materially alter the "basic and novel" characteristics of the invention. Ecolab also suggests that additional active ingredients which improve the performance of the basic claim formula, but do not otherwise change its function, do not materially alter the "basic and novel" characteristics of the invention.

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Microthin.com, Inc. v. SiliconeZone USA, LLC, No. 06 C 1522, Slip Op. (N.D. Ill. May 6, 2009) (Kendall, J.).

Judge Kendall construed the claims of plaintiff Microthin's patents to non-slip mats and based on the constructions granted defendant SiliconeZone summary judgment of invalidity as to the first claim of each patent. Of particular interest, the Court construed the following terms:

• Non-Slip meant reducing or preventing smooth sliding motion, but the Court declined to add Microthin's proposed requirement that it not be sticky to the touch because there was an independent claim that only added the requirement that the non-slip surface was not sticky to touch.
   
• Consisting of was construed as a closed transitional phrase, as it is normally used in patent law.

Based on its construction of non-slip, the Court held the first claims of each patent invalid. Microthin's sole argument against the asserted prior art was that it did not teach a non-slip surface because the surface was sticky to the touch. Because the Court construed non-slip without the sticky limitation, the first claims of each patent were invalid.

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SRAM Corp. v. Formula S.R.L., No. 06 C 1025 & 07 C 1565, Slip Op. (N.D. Ill. Apr. 3, 2009) (Kocoras, J.).*

Judge Kocoras construed the terms of plaintiff SRAM's patents to components of a hydraulic disc brakes for bicycles.  Of particular interest, the Court construed the following terms:

• "One-piece lever" did not require further construction.  Defendant's proposed construction -- a lever consisting of only one piece -- was unnecessarily limiting.  Furthermore, the use of patent term of art "consisting of" would have "drastic consequences" to the scope of the inventor's protection.  Similarly, defendant's other construction -- only one piece -- was unnecessary.  It did not add anything to the term "one-piece."
   
• "Attached" did not require a direct connection between two components, as proposed by defendant.  Defendant's reliance upon the patent's figures was pertinent, but not dispositive.  In fact, the specification specifically identified an attachment between two components by a third component.  Attached, therefore, meant the connection of two components, whether or not the connection used an intermediate component.

*  I am posting about this decision on the eve of the first Grand Tour of 2009, the Giro d'Italia.  Good luck to Lance Armstrong, Levi Leipheimer, and the American teams, High Road and Slipstream.

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