United States District Court, D. Idaho
J.R. SIMPLOT COMPANY, Plaintiff,
McCAIN FOODS USA, INC., Defendant. McCAIN FOODS LIMITED, Plaintiff,
J.R. SIMPLOT COMPANY, Defendant. Disputed Clause McCain's Construction Simplot's Construction McCain's Construction Simplot's Coustruction(s) Disputed Clause McCain's Construction Simplot's Construction Disputed Clause McCain's Construction Simplot's Construction
MEMORANDUM DECISION AND ORDER
C. NYE U.S. DISTRICT COURT JUDGE
Court held a Markman hearing on July 11, 2018, to
interpret the claims of three patents: McCain's utility
patent (United States Patent No. 6, 821, 540 (“'540
patent”)); McCain's design patent (United States
Patent No. D720, 916 (“'916 patent”)); and
Simplot's design patent (United States Patent No. D640,
036 (“'036 patent”)). The Court's
interpretation is set forth below.
case involves both utility and design patents. On October 7,
2016, Simplot sued McCain in United States District Court for
the District of Idaho for patent infringement, accusing
McCain's TWISTED POTATO product of infringing its
'036 design patent for a “[s]piral potato
piece” design. McCain denies infringement.
February 21, 2017, McCain sued Simplot in United States
District Court for the Northern District of Illinois for
patent infringement, accusing Simplot's SIDEWINDER
product of infringing its '916 patent for a “[r]oot
vegetable product” design. Simplot denies infringement.
McCain accuses Simplot of infringing its ‘540 utility
patent. This patent protects McCain's “[p]rocess
for treating vegetables and fruit before cooking, ”
that utilizes pulsed electric field (“PEF”)
technology to pre-treat fruits and/or vegetables to reduce
their resistance to cooking and cutting.
August 24, 2017, the Northern District of Illinois
transferred McCain's case to the District of Idaho and on
November 9, 2017, the undersigned consolidated the two cases.
Patents at Issue
The ‘540 Patent
‘540 patent protects McCain's developed process of
using high-energy electric field technology to pre-treat
potatoes before cutting and cooking them. Although McCain did
not invent this technology, it “invented” and
patented the process embodied in the ‘540
to McCain's PEF process, potatoes were preheated in a
water bath to make them easier to cut before cooking. This
preheating step, however, was time-consuming and expensive.
McCain developed the process protected by the ‘540
patent in which potatoes are “pre-treated” with
high-energy electric fields, which makes them much easier to
cut and provides numerous other benefits. Essentially, a
high-energy electric field is “pulsed” over the
potatoes (similar to a microwave oven). This process makes
the potatoes less resistant to cutting and less likely to
break down during cooking. Companies such as McCain and
Simplot use PEF technology to process a variety of fruits and
The ‘916 Patent
‘916 patent is McCain's design patent protecting
its root vegetable product known as the TWISTED POTATO. In
essence, the TWISTED POTATO is just that: a twisted potato
wedge similar to a large, curved French fry.
The ‘036 Patent
‘036 patent is Simplot's design patent protecting
its spiral potato piece known as the SIDEWINDER. The
SIDEWINDER is also a large spiral potato wedge or fry.
Court begins with the first step of the two-step infringement
analysis- determining the scope and meaning of the patent
claims at issue. See Markman v. Westview Instruments,
Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc),
aff'd, 517 U.S. 370, 116 S.Ct. 1384 (1996). The
construction of a patent is a question of law for the Court
to decide. Id.; see also O2 Micro Int'l Ltd.
v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362
(Fed. Cir. 2008) (“When the parties present a
fundamental dispute regarding the scope of a claim term, it
is the court's duty to resolve it.”). At the same
time, the court is not required to construe every limitation
present in a patent's asserted claims. O2 Micro
Int'l Ltd, 521 F.3d at 1359. “In some cases,
the ordinary meaning of claim language . . . may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood words.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
Cir. 2005) (en banc).
interpret the claims at issue, the Court must look first to
the intrinsic evidence of record, i.e., the patent itself,
including the claims, the specification and, if in evidence,
the prosecution history. See Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996).In discerning the legally operative meaning of disputed
claim language, such intrinsic evidence is the Court's
most important resource. Id.
evaluating the intrinsic evidence, the Court examines first
the words of the claims themselves, both asserted and
nonasserted, to define the scope of the patented invention.
Id. Although words in a claim are generally given
their ordinary and customary meaning, a patentee may choose
to be his own lexicographer and use terms in a manner other
than their ordinary meaning, so long as the special
definition of the term is clearly stated in the patent
specification or file history. Id.
evidence also includes the prosecution history of the patent,
if in evidence, which includes the complete record of all
proceedings before the Patent and Trademark Office (PTO),
including any express representations made by the applicant
regarding the scope of the claims. As such, the record before
the PTO is often of critical significance in determining the
meaning of the claims. Included within an analysis of the
file history may be an examination of the prior art cited
Court can construe the disputed claims from the intrinsic
evidence alone, it is not proper to rely on extrinsic
evidence “other than that used to ascertain the
ordinary meaning of the claim limitation.” Bell
Atl. Network Servs., Inc. v. Covad Commc'ns Grp.,
Inc., 262 F.3d 1258, 1269 (Fed. Cir. 2001). In
the rare circumstance that the court is not able to construe
the claims after examining the intrinsic evidence, however,
it may turn to extrinsic evidence to resolve any ambiguity.
evidence includes expert testimony, articles, and testimony
of the inventor. See generally Id. As with the
intrinsic evidence, extrinsic evidence may not be used to
“vary, contradict, expand, or limit the claim language
from how it is defined, even by implication, in the
specification or file history.” Id.
The ‘540 Patent
‘540 utility patent protects a process for pre-treating
vegetables using high-energy electric field technology. At
issue here is only the language of Claim 1 of the ‘540
patent which recites that the patent is:
A process for treating vegetables and fruit before cooking in
order to reduce their resistance to cutting, characterized by
the application of a high electric field directly to the
vegetables and/or fruit under conditions such that the
resulting increase in the temperature of the vegetables
and/or fruit is almost zero or at least sufficiently low as
to not amount to a preheating step.
Dkt. 53-2, at 5. McCain's position is that the patent is
purposely broad to allow for some flexibility. As a utility
patent, McCain asserts that it has patented-and protected-the
process as a whole, and specific things within that
process such as voltage, temperature, and time do not need to
be defined. In support of this proposition, McCain points to
its own explanation in the patent that “it would be
easy for a skilled person to experimentally determine optimal
operating conditions” for fruits and vegetables.
part, Simplot claims that the ‘540 patent is not broad,
but vague, and must be further defined. Simplot alleges that
without specifics, anyone using PEF technology would be
unable to ascertain if they were infringing on McCain's
patent. Simplot claims that McCain uses the ‘540 patent
in certain ways and under certain parameters and that the
‘540 patent covers those activities, but no more. For
example, Simplot argues that its use of PEF technology is
quantifiably different than McCain's and is
parties agree that there are four items at issue in Claim 1.
The Court will address each in turn.
a brief mention about the construction of patent claims.
Claims typically include three sections: the “preamble,
” the “transition, ” and the
“body.” The preamble sets out the type of
invention being claimed. Whether the preamble acts as a limit
on the scope of the claim is sometimes (as here) contested.
The transition is a phrase that links the preamble and the
body, such as “comprising, ” “consisting
of, ” or-in this case- “characterized by.”
The body then sets forth a series of phrases delineating the
structural limitations, elements, or steps of the invention.
Here, Simplot takes issue with the preamble and three phrases
in the body of the ‘540 patent.
"A process for treating vegetables and frait
before cooking in order to reduce their resistance to
The preamble is limiting and requires that the
"application of a high electric field" step
occurs before the steps of cutting and cooking. The
preamble means: A process for treating vegetables
and/or fruit before cooking and cutting to make
No construction necessary. The preamble is presumed
not to be a limitation and is readily understood by
its plain and ordinary meaning.
‘540 patent, the preamble reads as follows: “A
process for treating vegetables and fruit before cooking in
order to reduce their resistance to cutting.” McCain
asserts that the preamble is limiting, while Simplot argues
that the preamble does not limit the claims. In other words,
McCain's construction of the preamble rewrites it
slightly to clarify its purpose, while Simplot's leaves
the preamble does not limit the claims.” Allen
Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336,
1346 (Fed. Cir. 2002). However, the preamble may be limiting
“when the claim drafter chooses to use both the
preamble and the body to define the subject matter of the
claimed invention.” Bell Communications Research,
Inc. v. Vitalink Communications Corp., 55 F.3d 615, 620
(Fed. Cir. 1995). If the preamble is “necessary to give
life, meaning and vitality” to the claim, then the
claim preamble should be construed as limiting. Kropa v.
Robie, 187 F.2d 150, 152 (CCPA 1951). This is determined
“on the facts of each case in view of the claimed
invention as a whole.” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987); see also Applied Materials,
Inc. v. Advanced Semiconductor Materials Am., Inc., 98
F.3d 1563, 1572-73, 40 U.S.P.Q.2d 1481, 1488 (Fed. Cir. 1996)
(“Whether a preamble stating the purpose and context of
the invention constitutes a limitation . . . is determined on
the facts of each case in light of the overall form of the
claim, and the invention as described in the specification
and illuminated in the prosecution history.”).
McCain claims that the preamble, of necessity, defines the
invention in that it shows how the invention departs from the
prior art. Specifically, McCain contends that the preamble
illustrates that the invention is a sequential process. This
is important because there are other patents which use PEF
technology, but which are used for different purposes or in a
different order as what is claimed here. McCain asserts
that the Court must read the preamble as limiting the claim
to the application of PEF technology before both cutting and
cooking as that is the whole point of the invention and