Yoon Ja Kim v. Conagra Foods, Inc.

465 F.3d 1312, 80 U.S.P.Q. 2d (BNA) 1495, 2006 U.S. App. LEXIS 23810, 2006 WL 2773237
CourtCourt of Appeals for the Federal Circuit
DecidedSeptember 20, 2006
Docket2005-1414
StatusPublished
Cited by45 cases

This text of 465 F.3d 1312 (Yoon Ja Kim v. Conagra Foods, Inc.) 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
Yoon Ja Kim v. Conagra Foods, Inc., 465 F.3d 1312, 80 U.S.P.Q. 2d (BNA) 1495, 2006 U.S. App. LEXIS 23810, 2006 WL 2773237 (Fed. Cir. 2006).

Opinions

[1316]*1316Opinion for the court filed by Circuit Judge DYK.

Opinion eoneurring-in-part and dissenting-in-part filed by Circuit Judge SCHALL.

DYK, Circuit Judge.

Yoon Ja Kim, the holder of U.S. Patent No. Re. 36,355 (“the '355 patent”), appeals from the district court’s judgment of non-infringement of claim 5 and its dependent claims and claim 10 in favor of ConAgra Foods, Inc. (“ConAgra”). ConAgra cross-appeals from the district court’s judgment that the patent claims are not invalid. We affirm in all respects.

BACKGROUND

The patent in this case relates to bread-making. Oxidizing agents are used during the breadmaking process to strengthen dough, increase loaf volume, contribute to fíne crumb grain, and increase shelf life. Since the early 1900’s, potassium brómate was widely used as a slow-acting oxidant to improve the quality of bread. However, by the 1990’s, there was growing concern about the carcinogenic effects of potassium brómate, and the Food and Drug Administration encouraged the baking industry to seek suitable alternatives. Kim, a food chemist, believed that a combination of ascorbic acid and food acid would serve as a suitable alternative to potassium bró-mate in the breadmaking process, and applied for a patent on that composition. On April 23, 1996, Kim obtained U.S. Patent No. 5,510,129 for a potassium brómate re-placer composition. However, a few weeks later, Kim surrendered that patent to the Patent and Trademark Office (“PTO”) and filed a reissue application, alleging that an error had arisen during prosecution. After prosecution of her reissue application, Kim obtained the '355 reissue patent on October 26,1999.

On April 9, 2001, Kim filed suit against ConAgra alleging that ConAgra induced the infringement of independent claims 5 and 10 of the reissued '355 patent.1 Claims 5 and 10 were newly added during prosecution of the reissue application. The accused conduct was that ConAgra required licensees of its “Healthy Choice®” brand name to use recipes provided by ConAgra. Kim alleged that the Healthy Choice® Natural Wheat product infringed claim 5 and that the Healthy Choice® 7-Grain and Whole Grain products infringed claim 10.2 ConAgra stipu[1317]*1317lated that the bread recipes used in the accused products included ascorbic acid and food acid in the ranges specified in claims 5 and 10 of the '355 patent. Claim 10 differs from claim 5 in that it contains the additional limitation of yeast.

On June 30, 2003, ConAgra filed a counterclaim for a declaratory judgment of invalidity and noninfringement of the '355 patent.3 On November 10, 2003, ConAgra moved for summary judgment of invalidity based on the recapture rule. On March 26, 2004, the district court (Judge William T. Hart) denied ConAgra’s motion. The case then proceeded to trial. After each party’s case-in-chief, the opposing party moved for judgment as a matter of law (“JMOL”) under Rule 50 of the Federal Rules of Civil Procedure, and the district court reserved ruling on both motions. On October 13, 2004, a jury found that the asserted claims of the '355 patent were not invalid; that ConAgra had induced infringement of claim 10 with the licensing of its Healthy Choice ® 7-Grain and Whole Grain products, but that the inducement was not willful; and that claim 5 and the dependent claims were not infringed. ConAgra renewed its motion for JMOL, arguing invalidity and noninfringement. On April 28, 2005, the district court partially granted ConAgra’s motion for JMOL, finding that the '355 patent was not invalid but that claim 10 was not infringed. The district court entered final judgment on April 28, 2005, finding the '355 patent not infringed and not invalid.

Kim timely appealed the judgment of noninfringement, and ConAgra cross-appealed the judgment that the claims were not invalid. We have jurisdiction under 28 U.S.C. § 1295(a)(1) (2000).

DISCUSSION

I

Kim urges that we (1) reverse the district court’s grant of JMOL of noninfringement of claim 10, (2) overturn the jury’s verdict of noninfringement of claim 5, and (3) find both claims 5 and 10 willfully infringed by ConAgra.

Kim contends that the jury charge rested on an incorrect construction of the phrase “[a] potassium brómate replacer composition” in both claims 5 and 10 of the '355 patent.4 Alternatively, Kim argues that even under the district court’s claim construction, the accused products infringed.

A Claim construction

As part of its claim construction, the district court instructed the jury that “[t]o infringe one of the claims of the '355 Patent, a bread must (a) contain ingredients in the proportions in claim 5, 6, 7, 8, or 10 and, (b) in that particular bread, the ingredients must act as a potassium brómate replacer, that is, the ingredients must perform essentially the same junction in the production of that bread as would potassium brómate.” J.A. at 113 (emphasis add[1318]*1318ed). The court also provided the jury with the following definition: “Potassium Bró-mate is a slow acting oxidant once commonly used in the breadmaking process. Its function in the breadmaking process is to strengthen the dough, increase loaf volume, and contribute to fine crumb grain.” J.A. at 147 (emphasis added). Kim objected to these jury instructions. On appeal, Kim concedes that “potassium brómate re-placer” is a claim limitation, but argues that a “potassium brómate replacer” is simply a “potassium brómate substitute,” which she in turns describes as a composition that is present when potassium bró-mate is not.

Upon review of the specification, we agree with the district court’s claim construction. “[CJlaims must be read in view of the specification, of which they are a part.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.Cir.2005) (en banc) (internal quotation marks omitted). The specification “is the single best guide to the meaning of a disputed term.” Id. (internal quotation marks omitted). Here, while the specification does not explicitly define the term “potassium brómate replacer,” it does make clear that the claimed potassium brómate replacer is an oxidizing agent. In fact, the specification explicitly states that “the potassium brómate replacer provided in the present invention is a more effective oxidant than potassium brómate.” '355 patent, col. 3, 11. 1-2. The specification also describes oxidants, or oxidizing agents, as follows:

Oxidizing agents provide strengthening of dough during the manufacturing process of yeast-leavening products. As a result, oxidizing agents are used to provide greater loaf volume, improve internal characteristics such as grain and texture, and enhance symmetry and keeping quality of yeast-leavening products.

'355 patent, col. 1,11. 22-27.

Thus, the specification reveals that the claimed potassium brómate replacer functions as an oxidant and that oxidants strengthen dough, increase loaf volume, and contribute to fine crumb grain.

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465 F.3d 1312, 80 U.S.P.Q. 2d (BNA) 1495, 2006 U.S. App. LEXIS 23810, 2006 WL 2773237, Counsel Stack Legal Research, https://law.counselstack.com/opinion/yoon-ja-kim-v-conagra-foods-inc-cafc-2006.