ECOLAB, INC. v. FMC CORP. Nos. 2008-1228, 2008-1252.
569 F.3d 1335 (2009)
ECOLAB, INC., Plaintiff-Appellant, v. FMC CORPORATION, Defendant-Cross Appellant.
United States Court of Appeals, Federal Circuit.
June 9, 2009.
Thomas L. Hamlin, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, MN, argued for plaintiff-appellant. With him on the brief were Stephen P. Safranski and Heather M. McElroy.
Rudolf E. Hutz, Connolly Bove Lodge & Hutz LLP, of Wilmington, DE, argued for defendant-cross appellant. With him on the brief was Francis DiGiovanni. Of
counsel was Steven A. Nash. Of counsel on the brief was Alan M. Anderson, Briggs and Morgan, P.A., of Minneapolis, MN.
Before RADER, GAJARSA, and DYK, Circuit Judges.
GAJARSA, Circuit Judge.
In this patent infringement case, Ecolab, Inc. appeals and FMC Corporation cross appeals from the final judgment of the United States District Court for the District of Minnesota, which was based on the jury's verdict that: Ecolab infringed specified claims of FMC's U.S. Patent No. 5,632,676 ("the '676 patent"); FMC willfully infringed specified claims of two patents asserted by Ecolab — U.S. Patent Nos. 6,010,729 ("the '729 patent") and 6,113,963 ("the '963 patent"); and specified claims of each patent asserted by Ecolab are invalid as anticipated or obvious. We find no error regarding the majority of issues presented on appeal. However, we hold the district court erred by denying FMC's motions for judgment as a matter of law ("JMOL") that claim 7 of the 729 patent and claims 25-28 of the '963 patent are invalid, by failing to conduct the proper analysis when considering the permanent injunction motions, and by failing to award interest. Thus, we affirm-in-part, reverse-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.
I. The Technology and Patents
Ecolab and FMC sell chemical products used by beef and poultry processors to reduce pathogens, such as E. coli and salmonella, on uncooked beef and poultry. Ecolab sells Inspexx, with Inspexx 100 marketed for use on poultry and Inspexx 200 marketed for use on beef. FMC sells FMC-323, which is used on either beef or poultry. The Inspexx and FMC-323 products contain the antimicrobial compound peracetic acid ("PAA"), which the food processing and food service industries have long used as a surface sanitizer. Additionally, the Inspexx products contain peroctanoic acid and octanoic acid, whereas FMC-323 does not.
Both Ecolab and FMC have obtained patents directed to the use of PAA as a sanitizer in beef and poultry processing. In April 1993, Ecolab obtained U.S. Patent No. 5,200,189 ("the Oakes patent"), which was not asserted in this case but is relevant prior art. That patent claims a peroxyacid antimicrobial composition containing peracetic, peroctanoic, and octanoic acids. According to the Oakes patent, the combination of the three acids "produces a synergistic effect, producing a much more potent biocide than can be obtained by using these components separately." Oakes Patent col.2 ll. 51-53. The patent states that the claimed sanitizing solution "can be used effectively to clean or sanitize facilities and equipment used in the food processing, food service and health care industries." Id. at col.2 ll.56-59. In October 1993, FMC submitted a patent application that disclosed a method for sanitizing meat, specifically processed fowl, by applying PAA directly to the meat. That patent application issued as the '676 patent in 1997. The patent described the invention as "an extremely effective method for sanitizing a fowl carcass without unduly affecting the skin or the flesh of the bird carcass." '676 Patent col.2 ll.60-62. In 1998 and 1999, Ecolab filed three patent applications directed to methods for applying PAA alone or in combination with other peracids directly to meat products, including
II. The Proceedings before the District Court
Ecolab filed an action against FMC for infringement of the '729, '286, and '963 patents. FMC counterclaimed that Ecolab infringed FMC's '676 patent, and each party asserted its opponent's patent claims are invalid. The case was tried before a jury, and the jury found that: (1) claims 17, 19, 20, and 22 of Ecolab's '729 patent are invalid as anticipated or obvious; (2) claims 1-4 of Ecolab's '286 patent are invalid as obvious; (3) claims 7, 17, 19, 20, and 22 of Ecolab's '963 patent are invalid as anticipated or obvious; (4) the '676 patent claims asserted by FMC are not invalid; (5) FMC willfully infringed claim 7 of the '729 patent and claims 25, 27, and 28 of the '963 patent; (6) Ecolab infringed claims 1, 5, 6, and 7 of FMC's '676 patent; and (7) neither party induced infringement of any claims. The jury awarded reasonable royalty damages to both parties, and the district court entered judgment on the jury's verdict.
Both Ecolab and FMC filed post-trial motions. Ecolab filed motions for JMOL, a permanent injunction, enhanced damages, attorney fees, prejudgment and post-judgment interest, an accounting, and amendment of the judgment. FMC filed various JMOL and new trial motions and a motion to alter the judgment that included a request for a permanent injunction, prejudgment and post-judgment interest, and an accounting. The district court denied all post-trial motions in summary form and without explanation. Order, Ecolab, Inc. v. FMC Corp., No. 05-CV-831 (D.Minn. Feb. 22, 2008). Ecolab and FMC timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
Ecolab appeals and FMC cross appeals the district court's denial of their respective JMOL motions. Ecolab further asserts the district court erred by denying its motions for a permanent injunction, enhanced damages, attorney fees, interest, and an accounting. FMC further asserts the district court erred by misconstruing a claim term, by imposing an improper damages award, and by denying its requests for a permanent injunction, prejudgment interest, and an accounting.
I. The JMOL Motions
Both Ecolab and FMC assert that the district court erred by denying their respective JMOL motions. Specifically, Ecolab contends the district court should have granted JMOL that Ecolab did not infringe the '676 patent claims and that FMC induced infringement of Ecolab's patent claims. FMC contends the district court should have granted JMOL that claim 7 of the '729 patent and claims 25-28 of the '963 patent are invalid as anticipated or obvious, that Ecolab induced infringement of FMC's patent claims, and that FMC did not willfully infringe Ecolab's patent claims.
A. Standard of Review
This court applies the procedural law of the relevant regional circuit when reviewing the district court's denial of a motion for JMOL. MicroStrategy Inc. v. Bus. Objects, S.A.,
B. Ecolab's Motion for JMOL of Noninfringement
The jury found Ecolab infringed claims 1, 5, 6, and 7 of FMC's '676 patent, all of which include the following:
'676 Patent col. 10 ll. 15-48. Ecolab argues it is entitled to JMOL of noninfringement for two reasons. First, Ecolab argues that when the '676 patent claims are properly construed in light of FMC's prosecution history disclaimer, Inspexx does not infringe because the patent claims cover only solutions containing PAA as the sole antimicrobial agent. Second, Ecolab argues it does not infringe because Inspexx does not "sanitize" meat products under the patent's definition of that term. We find neither argument persuasive and hold that the district court did not err when it denied Ecolab's motion for JMOL of noninfringement.
1. Prosecution History Disclaimer
Ecolab first argues that, during prosecution, FMC disclaimed compositions containing multiple antimicrobial agents. Thus, because Inspexx contains three antimicrobial agents, Ecolab argues that Inspexx does not infringe the '676 patent as a matter of law. Whether prosecution history disclaimer applies is a legal question this court reviews de novo. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1456 (Fed.Cir. 1998) (en banc). As this court has noted, "since, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover, he is by implication surrendering such protection." Ekchian v. Home Depot, Inc.,
FMC contends the district court did not err when it declined to apply prosecution history disclaimer because its prosecution statements cannot reasonably be interpreted as disclaimers when they are properly read in the context of the entire
In the first office action issued by the United States Patent and Trademark Office, the Examiner rejected all claims as anticipated by U.S. Patent No. 5,208,057 ("the Greenley patent") and as obvious in light of the combination of the Greenley and Oakes patents. FMC responded to those rejections by arguing, inter alia, that its invention uses sanitizing solutions containing PAA as the only antimicrobial agent. In particular, FMC stated: "The peracetic acid is the sole antimicrobial agent in the sanitizing solution." Amendment and Remarks at 2, U.S. Patent Appl. Ser. No. 08/134,995 (Oct. 6, 1994) (emphasis added). To distinguish the Greenley patent, FMC stated: "Greenley et al. do not teach the use of peracetic acid alone as a sanitizer." Id. at 3 (emphasis added). To distinguish the Oakes patent, FMC stated: "Oakes et al. appears to be strongly advocating and teaching the use of mixtures of biocides, not the use of a single biocide." Id. at 3 (emphasis added).
In response to those statements, the Examiner noted that the claims are directed to the use of a composition "which consists essentially of" PAA and are thus not limited to compositions containing PAA as the sole antimicrobial agent. Examiner's Action at 2, U.S. Patent Appl. Ser. No. 08/134,995 (Mar. 1, 1995) ("[I]t should be noted that the terminology `consisting essentially' does not mean that Applicants' sanitizing solution is consisted `solely' of a peracetic acid solution."). Following the Examiner's clarification, FMC never repeated the allegedly disclaiming statements and instead offered alternative reasons to overcome the Greenley and Oakes prior art. The Examiner eventually allowed the claims over the cited prior art, without any change to the claims' "consists essentially of" language. For these reasons, a reasonable reader of this prosecution history could conclude that FMC's initial statements that PAA is the sole antimicrobial agent used in its claimed method were hyperbolic or erroneous, that the Examiner corrected FMC's error in the following communication, that FMC recognized its error and never again repeated or relied upon the erroneous rationale, and that the claims were allowed for reasons independent of the allegedly disclaiming statements. Thus, when FMC's statements are considered in the context of the prosecution history as a whole, they simply are not clear and unmistakable enough to invoke the doctrine of prosecution history disclaimer.
Ecolab argues that FMC cannot rely on the claims' "consists essentially of" language because the '676 patent disclosure and prosecution history clearly altered the meaning of that language. While "consisting essentially of" usually "signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention," PPG Indus. v. Guardian Indus. Corp.,
Because FMC has neither altered the typical meaning of "consists essentially of" nor clearly disclaimed compositions containing multiple antimicrobial agents, the district court did not err when it denied Ecolab's JMOL motion.
2. Construction of "Sanitize"
The '676 patent claims are directed to a "method for sanitizing fowl," '676 Patent col.10 l.15, and the patent explicitly states that the term "sanitize" "denote[s] a bacterial population reduction to a level that is safe for human handling and consumption," id. at col.2 ll. 10-12. Thus, Ecolab argues that Inspexx cannot infringe the '676 patent claims because it does not and cannot make raw poultry safe for human consumption; cooking is required. The district court instructed the jury that, in the context of the '676 patent, the "sanitized" meat was not necessarily safe for human consumption immediately after treatment with PAA; the "sanitized" meat was not safe for consumption until it was cooked. Thus, Ecolab argues that "[b]y incorporating a subsequent `cooking' element into the term `sanitize,' the district court overrode the express definition of `sanitize' set forth in the '676 patent." Appellant's Br. at 41. We review the district court's claim construction determination de novo, Cybor Corp., 138 F.3d at 1456, and we find Ecolab's argument unpersuasive.
It is well-settled that an inventor may act as his own lexicographer to define a patent term, Phillips v. AWH Corp.,
Because the claim language at issue in Chef America was unambiguous, that case is distinguishable from the present case. In the present case, the definition of "sanitize" is ambiguous in that it does not indicate when consumption is to take place— the definition does not indicate whether the consumption would occur immediately after application of PAA or, for example, at a later time after the meat is cooked. The testimony of Ecolab's expert, Dr. Tompkin, helps to resolve that ambiguity, albeit in FMC's favor. Specifically, Dr. Tompkin admitted that in-plant inspectors examine poultry that has been treated with PAA to determine if it is "fit for human consumption." J.A. at 5785. Surely, the inspectors do not require the poultry to be "fit for human consumption" in its uncooked state. Thus, Chef America is distinguishable, and the district court did not err when it construed the term "sanitize" to mean that the treated meat has become safe for human handling and post-cooking consumption.
In summary, FMC did not, via an explicit or implicit disclaimer, limit the claims to the use of compositions containing PAA as the only antimicrobial agent, and FMC's claims do not require that PAA-treated fowl be safe for immediate raw consumption. Thus, we affirm the district court's denial of Ecolab's motion for JMOL of noninfringement.
C. FMC's Motion for JMOL of Invalidity
FMC moved for JMOL that claim 7 of the '729 patent is invalid as anticipated or obvious and that claims 25-28 of the '963 patent are invalid as obvious. For the following reasons, we reverse the district court's denial of FMC's motions.
FMC argues it is entitled to JMOL that claim 7 of the '729 patent is invalid as anticipated by a prior art publication, J. Labadie et al., Development of a New Technique for Obtaining Axenic Meat, 4 Eur. J. of Applied Microbiology 67 (1977) ("Labadie"). To anticipate claim 7, Labadie must explicitly or inherently disclose each and every limitation of the claim. See Advanced Display Sys., Inc. v. Kent State Univ.,
'729 Patent col.23 ll.11-22 (the limitations in claim 1), col. 23 ll.36-38 (the additional limitation in claim 7).
According to the special verdict form, the jury explicitly found that claim 7 of the '729 patent is not invalid as anticipated by Labadie. Because that is a factual finding, Advanced Display Sys., 212 F.3d at 1281, we will not overturn it so long as it is supported by substantial evidence in the record, United States v. Vertac Chem. Corp.,
FMC bore the burden of demonstrating that claim 7 is anticipated. As we have explained:
Schumer v. Lab. Computer Sys., Inc.,
Labadie states: "After immersion in a 3% solution of peracetic acid for 2 min, the surfaces of muscles obtained from pig, horse and cattle were shown to be completely decontaminated." Labadie at 67. Dr. Russell explained how that statement, along with other portions of the article, met all of the claim limitations. J.A. at 5958-59. He explained that Labadie disclosed "[a] method of treating an animal carcass to reduce a microbial population in resulting cut meat," '729 Patent col.23 ll. 11-12, because it describes a method for sanitizing the surfaces of muscles obtained from animals. He explained that the Labadie method disclosed the application of PAA to the muscle surface by immersing the cut meat in a 3% PAA solution, which discloses the claim limitations requiring application to the animal carcass of "at least 2 ppm of one or more mono or diperoxycarboxylic acids having up to 12 carbon atoms," id. at col.23 ll. 16-18. Dr. Russell further testified that the method described by Labadie disclosed the limitation requiring "at least 20 ppm of one or more carboxylic acids having up to 18 carbon atoms," id. at col.23 ll. 19-20, because acetic acid is present in the specified concentration as an equilibrium solution with the PAA. Dr. Russell noted that the limitation requiring that "the carcass is selected from a muscle meat including beef, pork, veal, buffalo or lamb," id. at col.23 ll. 36-38, was disclosed in the Labadie publication because Labadie utilized muscles obtained from pig, horse, and cattle. Finally, Dr. Russell explained that the limitation requiring that the PAA be "applied in an amount and time sufficient to reduce the microbial population," id. at col.23 ll. 21-22, was disclosed by Labadie because the authors reported that the muscle surfaces were decontaminated as a result of the PAA treatment. Thus, FMC presented a strong prima facie case that claim 7 is invalid as anticipated by the Labadie publication.
Second, Ecolab asserts that it presented "voluminous evidence of undue experimentation" to the jury. Id. at 27. It is true that an anticipating prior art reference "must teach one of ordinary skill in the art to make or carry out the claimed invention without undue experimentation." Minn. Mining & Mfg. Co. v. Chemque, Inc.,
Finally, Ecolab argues that its claimed method is distinct from the method disclosed in the Labadie publication because Labadie teaches that each of two PAA treatment steps is followed by a trimming step, wherein the PAA-treated surface of the meat is trimmed away and discarded. See Labadie at 68-69. Ecolab also notes that Labadie teaches the use of sterile conditions to practice the method. See id. Because the Labadie article reported the results of sterility tests performed after the meat was twice treated with PAA and the PAA-treated surface was twice trimmed away, id. at 69, Ecolab argues the jury reasonably concluded that Labadie did not disclose the required limitation that the PAA be "applied in an amount and time sufficient to reduce the microbial population," see '729 Patent col.23 ll. 21-22. In other words, Ecolab argues the jury could reasonably conclude that Labadie does not disclose that the PAA treatment alone is sufficient to reduce the microbial population on a meat surface. We disagree.
First, the Labadie publication disclosed that muscle surfaces were decontaminated by PAA treatment before the trimming steps were performed, Labadie at 68 ("Decontamination of the muscle took place in an extemporaneously prepared (Fig.2) bath of peracetic acid (3%) connected to the sterile lock isolator 1. The muscle was
Moreover, the only reasonable conclusion that can be drawn from the evidence presented to the jury is that Labadie's immersion of cut meat into a 3% PAA solution for two minutes was, in the words of claim 7, "in an amount and time sufficient to reduce the microbial population." '729 Patent col. 23 ll. 21-22. As discussed in the previous paragraph, the Labadie publication itself discloses that the meat surface was decontaminated by the PAA treatment prior to any subsequent trimming steps. Dr. Tompkin, Ecolab's expert witness, agreed that the Labadie article teaches the use of a 3% PAA solution to kill bacteria on the surface of treated meat. J.A. at 5801 (agreeing that the Labadie article discloses the use of PAA to achieve a "total kill" of surface bacteria and "teach[es] contacting the surface of these red meat articles with peracetic acid to kill bacteria").
Under well-established law, "[t]hat which would literally infringe if later in time anticipates if earlier than the date of invention." Lewmar Marine, Inc. v. Barient, Inc.,
FMC moved for JMOL that claim 7 of the 729 patent and claims 25-28 of the '963 patent are invalid as obvious, and the district court denied that motion. We need not address FMC's argument that claim 7 of the 729 patent is invalid as obvious because we have already determined that claim 7 is invalid as anticipated. Regarding claims 25-28 of the '963 patent, we reverse the district court's denial of FMC's JMOL motion.
"When reviewing a district court's JMOL determination as to obviousness,
FMC argues the district court erred by denying its motion for JMOL that claims 25-28 of the '963 patent are obvious over a combination of the '676 patent and other pieces of prior art, such as U.S. Patent No. 5,143,739 ("the Bender patent"). We agree. Claim 25 is directed to "a method of treating a meat product to reduce a microbial population in the meat product," wherein the method comprises steps for treating meat, such as poultry, with a PAA composition under specified conditions. '963 Patent col.25 l.43-col.26 l.8. Claims 26-28 are dependent on claim 25. Id. at col.26 ll. 9-16. The claims require specified temperature, spray pressure, and contact time limitations. Id. at col.25 l.49 ("at a temperature of up to about 60° C"), col.25 l.48 ("at a pressure of at least 50 psi"), col.25 l.49-col.26 l.1 ("resulting in a contact time of at least 30 seconds"). FMC correctly notes that its '676 prior art patent discloses the temperature and contact time limitations. '676 Patent col.9 ll. 47-49 (disclosing the preferred temperature for PAA treatment as 4°C-40°C), col.3 ll. 42-43 (applying PAA for 0.5 minutes or more). The parties agree that the '676 patent does not, however, disclose treatment of poultry with PAA at a particular spray pressure, and the parties primarily limit their dispute to whether Ecolab's addition of the "at least 50 psi" pressure limitation in the '963 patent claims would have been obvious.
FMC's '676 prior art patent disclosed "rapidly spraying" PAA onto poultry in order to sanitize the poultry, but it did not disclose that such rapid spraying should be at 50 psi or greater. Id. at col.3 ll. 34-37. However, Ecolab's expert acknowledged that the advantages of spraying antimicrobial solutions onto meat at a pressure greater than 50 psi were known in the prior art. J.A. at 5796. Such advantages
First, "there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." See KSR, 127 S.Ct. at 1741. The advantages of spraying antimicrobial solutions onto meat at high pressure were known, and methods for sanitizing meat with PAA were known. There was an apparent reason to combine these known elements—namely to increase contact between the PAA and the bacteria on the meat surface and to use the pressure to wash additional bacteria off the meat surface during the PAA treatment. Second, the person of ordinary skill would have known how to make this combination; he could have used the mechanical high pressure sprayer disclosed in the Bender patent. See Bender Patent col.8 ll. 15-19, col.8 ll.33-35. Because the Bender patent disclosed using high pressure to improve the effectiveness of an antimicrobial solution when sprayed onto meat, and because an ordinarily skilled artisan would have recognized the reasons for applying PAA using high pressure and would have known how to do so, Ecolab's claims combining high pressure with other limitations disclosed in FMC's patent are invalid as obvious. See KSR, 127 S.Ct. at 1740 ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). Finally, the claims are invalid as obvious because the combination of the high pressure treatment disclosed in the Bender patent with the methods disclosed in FMC's patent is merely the combination of familiar elements to yield predictable results. See id. at 1739 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). Thus, we cannot uphold the jury's verdict that claims 25-28 of the '963 patent are nonobvious, and we reverse the district court's denial of FMC's JMOL motion.
D. FMC's Motion for JMOL of Induced Infringement
FMC moved for JMOL, asserting that Ecolab induced infringement of its patent claims. To prevail on an induced infringement claim, the patentee
Ecolab presented evidence from which the jury could have reasonably concluded that Ecolab personnel reasonably believed that FMC's '676 patent claims did not cover the use of Inspexx. For example, Dr. Cords testified regarding the three antimicrobial components of Inspexx, the synergistic effect achieved by that combination, and the fact that the Oakes patent—which was prior art against the '676 patent—disclosed that same combination of antimicrobial agents. From that testimony, the jury could have reasonably concluded that Ecolab lacked the intent required for induced infringement. See DSU, 471 F.3d at 1307. Namely, the jury could have concluded that Ecolab personnel reasonably believed that the use of Inspexx would not infringe FMC's patent claims because Inspexx contains a synergistic combination of three antimicrobial agents, and thus does not "consist essentially of" PAA. Dr. Cords's testimony also supports the conclusion that Ecolab personnel reasonably believed that the '676 patent did not cover Inspexx because Inspexx contains the same combination of antimicrobial agents disclosed in the prior art Oakes patent. While evidence of intent is not required to prove infringement, it is required to prove induced infringement. See id. Thus, even though Ecolab's product was ultimately found to infringe, the jury had substantial evidence from which it could have reasonably concluded that Ecolab did not induce infringement because it lacked the required intent.
II. The Permanent Injunction Motions
Both parties assert the district court erred in denying their respective motions for a permanent injunction. We need not consider Ecolab's assertion of error because we hold today that the claims found to be infringed by FMC are invalid as a matter of law; thus, any error committed by the district court regarding its consideration of Ecolab's motion for injunctive relief is harmless.
To obtain injunctive relief, the plaintiff must demonstrate "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the
Here, the district court failed to consider any of the eBay factors and failed to make any factual findings regarding those factors. That is an abuse of discretion. See eBay, 547 U.S. at 391-93, 126 S.Ct. 1837 (instructing district courts to consider four equitable principles when assessing the propriety of injunctive relief in patent disputes); Nutrition 21 v. United States,
Although the district court did not consider the eBay factors, FMC nonetheless asserts that it made the required showing and that it is entitled to injunctive relief. However, we decline to analyze the eBay factors in the first instance. See Acumed LLC v. Stryker Corp.,
Accordingly, we vacate the district court's denial of FMC's motion for a permanent injunction, and we remand for the district court to perform the analysis required under eBay.
III. FMC's Motion for Prejudgment Interest
FMC asserts the district court abused its discretion when it denied FMC's motion for prejudgment interest, and we agree. It is unclear why the district court denied that motion because it gave no explanation for doing so. According to statute, "[u]pon finding for the
As for the parties' remaining arguments, we have carefully considered them and find them unpersuasive.
For the foregoing reasons, the decision of the district court is affirmed-in-part, vacated-in-part, reversed-in-part, and remanded for further proceedings consistent with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, REVERSED-IN-PART, AND REMANDED
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