Schreiber Foods, Inc. v. Saputo Cheese USA Inc.

83 F. Supp. 2d 942, 2000 U.S. Dist. LEXIS 1769, 2000 WL 201542
CourtDistrict Court, N.D. Illinois
DecidedFebruary 15, 2000
DocketNo. 99 C 2083
StatusPublished

This text of 83 F. Supp. 2d 942 (Schreiber Foods, Inc. v. Saputo Cheese USA Inc.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Schreiber Foods, Inc. v. Saputo Cheese USA Inc., 83 F. Supp. 2d 942, 2000 U.S. Dist. LEXIS 1769, 2000 WL 201542 (N.D. Ill. 2000).

Opinion

MEMORANDUM OPINION AND ORDER

CASTILLO, District Judge.

Schreiber Foods, Inc. brought this patent infringement action against Saputo Cheese USA Incorporated alleging that Saputo sells several imitation cheese products infringing Schreiber’s Reissue Patent No. 35,728 (“Patent 728”). The parties submitted claim-construction briefs1 in which they disagree about the scope and meaning of five terms used throughout Patent 728: “edible mass,” “about 25%,” “about 2 minutes to about 4 minutes,” “temperature of about 190° F. to about 205° F.,” and “principal protein source.” Accordingly, on February 4, 2000, we conducted a Markman hearing, Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and now construe the disputed terms.

BACKGROUND

When interpreting a patent claim, we look to the intrinsic evidence of record: the patent claims, the specification, and the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Here, we perform a brief overview of Schreiber’s patent history and the patent at issue. We postpone in-depth scrutiny of these matters for the relevant analysis sections.

A. Patent Prosecution History

Schreiber was not the first to conceptualize (and then patent) the use of dry rennet casein to make imitation cheese. In 1977, Badertscher Patent No. 4,055,555 disclosed a process for solvating dry rennet casein for the purpose of creating curd from milk. (Saputo Ex. A, Patent No. 4,055,555.) Likewise, Middleton Patent No. 4,197,322 disclosed a process for producing “synthetic cheese” from dry rennet casein. (Saputo Ex. D, Patent No. 4,197,-322.) Instead, Schreiber’s invention purportedly improved the prior art by solvat-ing a larger amount of rennet casein as a percentage of the total product. According to Schreiber, the advantage of its process is a cheese analog with rennet casein as the principal, or sole, protein source.

[944]*944Schreiber filed its initial patent application, which disclosed a one-step cheese-making process, on February 28, 1977. The Patent Office immediately rejected all of Schreiber’s claims, so Schreiber abandoned its initial filing, (Saputo Ex. F, Serial No. 877,071 Tab 1, Patent Application of Feb. 18, 1978, at 2), and filed a new application2 in which Schreiber, for the first time, disclosed a two-step process for making imitation cheese. The 1978 application added a two-step process during which an “edible mass” was first formed and then other ingredients added. The patent examiner again rejected Schreiber’s claims. After two more proposed amendments, Schreiber’s application was granted, and patent number 4,444,800 (Patent 800) issued.

In 1987, however, Schreiber filed a reissue application because it believed part of Patent 800 was invalid based on prior art; namely, a cheese produced and sold by Schreiber in May 1976. (Saputo Ex. G, Tab 1, Reissue Declaration at 2.) The 1976 cheese was made pursuant to the two-step process first disclosed in Schreiber’s 1978 application. Because Schreiber did not disclose the two-step process within one year of offering for sale a product made using that process, it appeared that at least some of Patent 800’s two-step claims were barred by 35 U.S.C. § 102(b).

Schreiber’s reissue application proposed amending some existing claims and adding claims 32 through 43.3 The examiner rejected Schreiber’s reissue application because of the 1976 cheese prior art. (Saputo Ex. G, Tab 6, Office Action of Feb.17,1988^ at 5 (“Claims 1-43 are rejected ... as being anticipated by the admitted public sale of an American imitation cheese product ... more than one year prior to filing an application for the presently claimed invention.”).) After further attempts to amend the reissue application failed, Schreiber appealed the preliminary examiner’s decision to the Patent Office Board of Appeals.

The Board rejected all but one of the examiner’s rejections, which had the practical effect of affirming the examiner’s decision. (Saputo Ex. G, Tab 27, Board of Patent Appeals’ Decision.) Specifically, the Board disagreed with the examiner that certain reissue claims contained new matter, (id. at 12-14), but affirmed the examiner’s opinion that Claims 1-43 were unpatentable over the “admitted public sale” of the 1976 cheese, (id. at 4, 21-28). In other words, the Board affirmed the examiner’s opinion that Claims 1-43 set forth an obvious extension over prior art: the 1976 cheese.

Schreiber returned to the preliminary examiner and submitted another CIP application, in which it tried to distinguish the 1976 cheese and the two-step claims presented in the 1978 application while simultaneously arguing that the “edible mass” claims were not new matter. (Sa-puto Ex. G, Tab 29, Preliminary Amendment of Dec. 20, 1991, at 8.) Again, the examiner rejected the proposal. The process (proposed amendments that were then rejected) was repeated numerous times (the record contains 7 formal amendment proposals and four written rejection — opinion-like documents called “Office Actions” — plus several references to amendments proposed during telephone conferences). On February 10, 1998, more than twenty years after the process began, [945]*945Schreiber received Reissue Patent No. 35,-728 (“Patent 728”4).

B. Patent 728

Patent 728 discloses a “cheese-like product ... produced by the direct conversion of dry, particulate rennet casein to a substantially homogenous mass of cheese-like consistency” and the process for making that product. (Compl. Ex. A, Patent 728 at Abstract.) According to the patent specification, “[t]he important factors of ... the present process are the relative amounts of dry rennet casein, the solvation agent, and water.” (Patent 728, col. 2, ll. 28-31.) Specifically,

[t]he cheese-like product of this invention is based [on?] a substantially homogenous mass comprising at least about 25 percent by weight of previously dry but solvated edible rennet casein as the principal protein source, a solvation agent and water. A bland edible lipid material, i.e., an edible oil or fat, and a suitable flavoring agent (or agents) can be present in quantities sufficient to impart to the product the characteristic fat content and flavor of the desired cheese analog.

(Patent 728, col. 2, ll. 39-47.)

The claims in Patent 728 fall into two general categories: the “food product” claims and the “edible mass” claims, defined as any claim that uses the phrase “edible mass” regardless of the presence of the phrase “food product.” Of the claims asserted by Schreiber against Sapu-to products, Claims 30, 32-34, 38-40, 42, and 44 are in the “edible mass” category; Claims 4, 10, 12-13, 16-17, 31, 35-36, and 43 relate to a “food product.”5

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83 F. Supp. 2d 942, 2000 U.S. Dist. LEXIS 1769, 2000 WL 201542, Counsel Stack Legal Research, https://law.counselstack.com/opinion/schreiber-foods-inc-v-saputo-cheese-usa-inc-ilnd-2000.