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“Containing” Means Comprising

July 29, 2004

Decision icon Decision

Last Month at the Federal Circuit - August 2004

Judges: Dyk (author), Schall, and Prost

In Mars, Inc. v. H.J. Heinz Co., No. 03-1617 (Fed. Cir. July 29, 2004), the Federal Circuit vacated the district court’s SJ of noninfringement based on a new claim construction and noninfringement under the DOE, and remanded for further proceedings.

Mars, Inc. (“Mars”) sued H.J. Heinz Company, L.P. (“Heinz”), alleging the infringement of U.S. Patent No. 6,312,746 (“the ‘746 patent”). The ‘746 patent is directed to a dual-texture, animal-food product with a soft inner component surrounded by a harder, more rigid shell. At issue in the case is the meaning of the claim language “containing a mixture of lipid and solid ingredients.” The district court construed the limitation as close-ended, requiring the exclusion of ingredients other than lipids and solids. It also found that “ingredients” referred only to the starting materials used to make the product, and not to the end components of the accused finished product. Because Mars did not dispute that certain nonlipid, nonsolid syrups were used to make the accused products, the district court held that there was no infringement.

On appeal, Mars first argued that the district court had erred in holding that the term “ingredients” refers only to starting materials. The Federal Circuit agreed that the claims are not so limited. Dictionary definitions indicate that the ordinary meaning of “ingredients” can refer to either starting materials or to the end components of a mixture. The specification does not provide a clear definition and refers only to “ingredients,” and not to “a mixture of . . . ingredients” as required by the claims. The Federal Circuit thus held that the term “ingredients” includes components of the inner component at any time after they have been mixed together.

The Court next construed the meaning of the terms “containing” and “mixture” in the phrase “containing a mixture of lipid and solid ingredients.” Neither the dictionary nor the MPEP provides a definition for “containing” that excludes additional, unnamed ingredients. In fact, the MPEP specifically provides that “containing” is synonymous with “comprising.” The Court also noted that nothing within the ordinary meaning of “mixture” bars additional, unnamed ingredients.

In limiting the claim, the district court had relied on a portion of the specification describing a preferred embodiment of the soft inner component as comprising “about 40-90 wt % solids and about 10-60% lipids . . . with the sum of the wt % of solids and lipids, in all cases, not exceed[ing] 100 wt %.” The Federal Circuit found that the mere fact that the sum of the minimum and maximum values of the stated ranges equals 100 percent does not suggest that the sum of the percentages must always equal 100 percent. Thus, the specification recites a range of values that may vary given the presence of additional, unnamed ingredients.

Heinz also argued that even if the claim language is open-ended, Mars had disclaimed the addition of water to the starting materials used to make the inner component. The Court disagreed, pointing out that the specification and claims clearly indicate that water is present in the inner component. The Court found no support in the intrinsic record for Heinz’s assertion that “moisture” and “water activity” in the inner component, as recited in the asserted claims, are distinguished from water intentionally added to the ingredients. Having construed the claim terms at issue, the Court determined that genuine issues of fact remained as to whether the accused products infringe the ‘746 patent, either literally or under the DOE, and remanded the case for further consideration.