November 3, 2008
5,188,861 claims a process for flavoring dried fruit. Patent holder Amazin' Raisins sued Ocean Spray Cranberries, hoping to squeeze some fruity lucre. Ocean sprayed them down, Amazin' losin' on claim construction. Non-infringement summary judgment was upheld on appeal. Another sloppy prosecutor's handicraft turns a juicy invention rancid.
Amazin' Raisins v. Ocean Spray Cranberries (CAFC 2008-1098) (non-precedential)
With respect to the first limitation, the district court construed the term "dried fruit" to mean "fruit from which natural moisture has been removed which has approximately 10 to 18% moisture remaining." This was based on the leading paragraph of the detailed description of the invention in the specification, stating (col. 3:58-63) (emphasis added):
The dried fruits which may be flavored employing the processes of the invention include peach, apple, pear, raisins, prunes, apricots and cherries. Any dried fruit which contains between about 10% to 18% moisture may be employed. The process can be employed on whole or sectioned pieces of dried fruit.
Ocean Spray used juicier fruit, well above the 18% moisture range.
Of course, Amazin' wanted "dried fruit" to be "any piece of fruit with some of its natural moisture removed." Sour grapes.
"In light of the statutory directive that the inventor provide a 'full' and 'exact' description of the claimed invention, the specification necessarily informs the proper construction of the claims." Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). It is hard to understand the import of the underscored sentence other than as defining the dried fruit to which the invention was directed. ARI now requests that this language be deleted from the specification or completely ignored. But the language employed by the patentee could not have been more clear in explaining the dried fruit to which the invention was directed: "Any dried fruit which contains between about 10% to 18% moisture may be employed." To now say that these limits should be ignored would be a direct contradiction to the public-notice function of a patent.
ARI next argues that importing a numerical range into the claim would be improper because the claim does not expressly contain any such limitation. Although it is generally true that we will not limit a claim written in general, descriptive words by a numerical range appearing only in the written description, see Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998), "when a patentee uses a claim term throughout the entire patent specification, in a manner consistent with only a single meaning, he has defined that term 'by implication.'" Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1271 (Fed. Cir. 2001). Again, the passage at issue announces the scope of the detailed description of the invention and precedes all other discussion of any embodiments or examples. In those decisions declining to import a numerical limitation into a claim, the specifications provided varying definitions and usage for the claim terms at issue. See Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 991 (Fed. Cir. 1999); see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1310 (Fed. Cir. 1999). Here, however, the specification contains no varied usage or ambiguity.
Amazin' wanted infringement under the doctrine of equivalents, because dried fruit with 10% of its original moisture is so like fruit with 90% of its juice. Wringing out the argument that was all wet -
Under the doctrine of equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997). The "all-limitations" rule, however, restricts the doctrine of equivalents in circumstances where its application would necessarily vitiate a claim limitation. In determining whether the application of the all-limitations rule is appropriate, we consider "the totality of the circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless." Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005).
We agree with the district court that a finding that OSC's decharacterized fruit is an equivalent would essentially render the "dried fruit" limitation meaningless, and thus vitiate that limitation from the claim... To find that an item of fruit with a moisture content between 87 to 90% is insubstantially different from an item of dried fruit with a moisture content between 10 to 18% would defy reason and necessarily render the "dried fruit" limitation meaningless.
Posted by Patent Hawk at November 3, 2008 12:44 AM | Claim Construction
"sloppy prosecutor". Is there a correlation between reduced availability of the doctrine of equivalents and the increased rate of malpractice claims?
Posted by: Steve Sereboff at November 3, 2008 6:14 PM
I was a bit ungenerous to the prosecutor. There’s nothing manifestly wrong with specification, or the claims. It’s a run-of-the-mill prosecution turn of the crank. There were some simple things the prosecutor could have done, such as carefully defining terms used in the claims.
If the client wanted an enforceable patent, with some range, as opposed to what the patent is, ‘861 clearly wasn’t up to it.
The patent shouldn’t have been asserted without more careful vetting. There were no surprises in what went down.
Posted by: Patent Hawk at November 3, 2008 7:25 PM