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J.R. Simplot Co. v. McCain Foods USA, Inc.

United States District Court, D. Idaho

August 16, 2018

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




         The 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.


         A. Procedural Background

         This 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.

         On 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.

         Additionally, 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.

         On 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. Dkt. 40.

         B. Patents at Issue

         1. The ‘540 Patent

         The ‘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 patent.

         Prior 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 vegetables.

         2. The ‘916 Patent

         The ‘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.

         3. The ‘036 Patent

         The ‘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.


         The 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).

         To 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.

         In 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.

         Intrinsic 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 therein. Id.

         If the 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. Id.

         Extrinsic 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.

         IV. ANALYSIS

         A. The ‘540 Patent

         McCain's ‘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. Id.

         For its 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 distinguishable.

         The parties agree that there are four items at issue in Claim 1. The Court will address each in turn.

         First, 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.

         1. Preamble

Disputed Clause
McCain's Construction
Simplot's Construction

"A process for treating vegetables and frait before cooking in order to reduce their resistance to cutting"

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 cutting easier.

No construction necessary. The preamble is presumed not to be a limitation and is readily understood by its plain and ordinary meaning.

         In the ‘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 it untouched.

         “Generally, 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.”).

         Here, 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.[1] 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 ...

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