Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V.

93 F. App'x 225
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 17, 2004
DocketNo. 03-1204
StatusPublished
Cited by4 cases

This text of 93 F. App'x 225 (Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A. de C.V., 93 F. App'x 225 (Fed. Cir. 2004).

Opinion

LOURIE, Circuit Judge.

Pigmentos Vegetales del Centro S.A. de C.V. (“PIVEG”) appeals from the January 7, 2003 Supplemental Order of the United States District Court for the Southern District of Iowa, preliminarily restraining and enjoining it from “continuing to infringe United States Patent No. 5,382,714, including by making, importing, or selling within the United States lutein crystals from plant extracts with a purity level of 90 percent or greater and/or suitable for human consumption.” Kemin Foods, L.C. v. Pigmentos Vegetales del Centro S.A. de C.V., 240 F.Supp.2d 963 (S.D.Iowa 2003) (“Supplemental Order”). Because the district court erred in its construction of the claims of the ’714 patent and in its assessment of the validity and enforceability of that patent, and thus seriously misjudged the Plaintiffs-Appellees’ likelihood of success on the merits of their case, we hold that the court abused its discretion by [227]*227restraining and enjoining PIVEG and reverse the grant of a preliminary injunction.

BACKGROUND

Kemin Foods, L.C. is the licensee of the ’714 patent, owned by the Catholic University of America (“CUA”), and of United States Patent 5,648,564, owned by Kemin Industries, Inc. The ’714 and ’564 patents are directed to a composition consisting essentially of substantially purified lutein crystals and a lutein extraction method, respectively.

PIVEG is a Mexican company that traditionally made lutein-containing poultry feed supplements used to enhance the yellow coloration of egg yolks. After scientists apparently unaffiliated with any of the parties in this case discovered that lutein also has human nutritional benefits, PIVEG began marketing purified lutein crystals suitable for human consumption in the United States. Kemin Foods, L.C. and CUA (collectively, “Kemin”) then filed suit against PIVEG in the Southern District of Iowa on July 9, 2002, alleging infringement of the ’714 and ’564 patents. Kemin also moved for a preliminary injunction with respect to both patents. In opposition to Kemin’s motion, PIVEG denied infringing either of the asserted patents and also contended that the ’714 patent is invalid under 35 U.S.C. § 102 and unenforceable for inequitable conduct due to Kemin’s failure to cite a prior art article, Juliusz K. Tyczkowski & Pat B. Hamilton, Research Note: Preparation of Purified Lutein and Its Diesters from Extracts of Marigold (Tagetes erecta), 70 Poultry Sci. 651 (1991) (“the Poultry Science article”).

Following a hearing on Kemin’s motion for a preliminary injunction, the district court concluded that Kemin was likely to succeed on the merits of its claim with respect to the ’714 patent, but not the ’564 patent. Kemin Foods, L.C. v. Pigmentos Vegetales del Centro S.A. de C.V., 240 F.Supp.2d 963, 981 (S.D.Iowa 2003) (“Preliminary Order”). In reaching that conclusion, the court rejected PIVEG’s argument that the claims of the ’714 patent were anticipated by the Poultry Science article. Id. at 971. Although the court found a “strong indication of materiality” of that article, the court credited the testimony of Kemin Industries Worldwide’s president that Kemin had attempted to reproduce the results described in the article and found the method to be inoperative. Id. On that basis, the court also concluded that Kemin lacked the requisite intent for a finding of inequitable conduct. Id. at 974. The court then compared PI-VEG’s marketing materials to the asserted claims of the ’714 and ’564 patents and concluded that Kemin could likely show infringement of the former patent, id., but that the evidence adduced by Kemin was insufficient to show a substantial likelihood that PIVEG was using the method claimed in the latter patent, id. at 978.

The court also found that Kemin would likely suffer irreparable harm if PIVEG’s product were allowed to remain on the market, especially in view of an admission by PIVEG that it had no U.S. assets, id. at 979-80; that the balance of hardships in this case tilted slightly in Kemin’s favor because lutein for use as a human dietary supplement is its only product, id. at 980; and that a preliminary injunction would benefit the public’s interest in protecting patent rights, id. at 981. The court accordingly granted Kemin’s motion for a preliminary injunction in part, enjoining infringement of the ’714 patent, “including by making, using, importing, or selling within the United States purified lutein crystals from plant extracts,” but not the ’564 patent. Id. at 981-82.

[228]*228Several days later, PIVEG requested clarification of the terms of the preliminary injunction from the district court, arguing that the phrase “purified lutein crystals from plant extracts” was unclear. Over Kemin’s objection, the court narrowed the scope of the injunction by adding “with a purity level of 90 percent or greater and/or suitable for human consumption” after the phrase alleged to be unclear. Supplemental Order, 240 F.Supp.2d at 983.

PIVEG timely appealed from the grant of the preliminary injunction, and Kemin cross-appealed from the denial of a preliminary injunction with respect to the ’564 patent. We have jurisdiction pursuant to 28 U.S.C. § 1338(a).

The preliminary injunction was stayed by this court in April 2003, pending the outcome of this appeal. Also, upon Kemin’s motion, we have dismissed its cross-appeal. Kemin Foods, L.C. v. Pigmentos Vegetales del Centro S.A de C.V., 74 Fed. Appx. 55 (Fed.Cir.2003).

DISCUSSION

On appeal, PIVEG asserts that the preliminary injunction granted by the district court failed to comply with Federal Rules of Civil Procedure 52(a) and 65(d). In particular, PIVEG argues, the court did not specifically construe any of the claims of the ’714 patent and also failed to engage in a limitation-by-limitation infringement analysis. According to PIVEG, its human lutein product is only 87% +/2% pure, whereas the ’714 specification and examples reveal that “substantially pure lutein” means “at least 97.62% pure.”

To the extent that the district court did construe the claims of the ’714 patent, PIVEG contends, it read into them improper numerical (ie., “greater than 90% purity”) and end-use (ie., “suitable for human consumption”) limitations, and then improperly enjoined PIVEG from activities that meet those claim limitations in the disjunctive (ie., “and/or”) rather than only in the conjunctive. According to PIVEG, certain of its poultry-grade compositions are more than ninety percent pure and thus fall within the scope of the injunction despite the fact that they are not suitable for human consumption.

PIVEG also contends that the district court erred in finding that the ’714 patent was not anticipated by the Poultry Science article. PIVEG argues that the district court found a “strong indication” that the Poultry Science article was a material reference, but committed reversible error by failing to recognize that a holding of invalidity on the ground of anticipation does not require intent on the part of the patentee to withhold the anticipating reference.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
93 F. App'x 225, Counsel Stack Legal Research, https://law.counselstack.com/opinion/kemin-foods-lc-v-pigmentos-vegetales-del-centro-sa-de-cv-cafc-2004.