Federal Circuit Upholds High Standards for Prosecution History Disclaimer and Induced Infringement
June 09, 2009
Last Month at the Federal Circuit - July 2009
Judges: Judges: Rader, Gajarsa (author), Dyk
[Appealed from: D. Minn., Judge Rosenbaum]
In Ecolab, Inc. v. FMC Corp., Nos. 08-1228, -1252 (Fed. Cir. June 9, 2009), the Federal Circuit (1) affirmed the district court’s denial of Ecolab, Inc.’s (“Ecolab”) motion for JMOL of noninfringement; (2) reversed the district court’s denial of FMC Corporation’s (“FMC”) motions for JMOL of invalidity; (3) affirmed the district court’s denial of FMC’s motion for JMOL of induced infringement; (4) vacated the district court’s denial of FMC’s motion for a permanent injunction; and (5) vacated the district court’s denial of FMC’s motion for prejudgment interest.
Ecolab and FMC sell chemical products for use by meat processors to reduce pathogens on uncooked beef and poultry. Ecolab’s product (Inspexx) contains the antimicrobial compound peracetic acid (“PAA”), peroctanoic acid, and octanoic acid, while FMC’s product (FMC-323) contains only PAA. Ecolab owns U.S. Patent Nos. 6,010,729 (“the ’729 patent”), 6,113,963 (“the ’963 patent”), and 6,103,286 (“the ’286 patent”) directed to methods for applying PAA alone or in combination with other peracids directly to meat products to reduce microbial populations. FMC owns U.S. Patent No. 5,632,676 (“the ’676 patent”) directed to a method for sanitizing meat by applying PAA directly to the meat. Ecolab sued FMC for infringing certain claims of the ’729, ’963, and ’286 patents. FMC counterclaimed that Ecolab infringed certain claims of the ’676 patent.
The jury found, inter alia, that (1) FMC willfully infringed certain claims of the ’729 and ’963 patents; (2) Ecolab infringed certain claims of the ’676 patent; and (3) neither party induced infringement of any claims. Ecolab and FMC both filed various post-trial motions, which the district court denied in summary form and without explanation. Both parties appealed. On appeal, Ecolab asserted that the district court erred by denying its motion for JMOL of noninfringement of the ’676 patent. Ecolab first argued that Inspexx did not infringe the ’676 patent because FMC expressly disclaimed compositions containing multiple antimicrobial agents. Ecolab pointed to FMC’s statements during prosecution that the invention claimed in the ’676 patent was patentable over the cited prior art because it used sanitizing solutions containing PAA as the sole antimicrobial agent and that the prior art did not teach the use of a single biocide. But the Federal Circuit held that when considered in the context of the prosecution history as a whole and the unaltered claim language that the composition “consists essentially of” PAA, FMC’s statements were not clear and unmistakable enough to invoke the doctrine of prosecution history disclaimer.
Ecolab next argued that Inspexx did not infringe the ’676 patent because Inspexx did not “sanitize” meat within the meaning contemplated by the patent. Ecolab noted that the ’676 patent explicitly stated that the term “sanitize” in the asserted claims denoted a reduction in the bacterial population to a level that was safe for human handling and consumption. Relying on Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004), Ecolab argued that since Inspexx does not and cannot make raw poultry safe for human consumption without cooking, it cannot infringe the ’676 patent. The Court distinguished Chef America from the present case, stating that the claim language at issue in Chef America was unambiguous, whereas the definition of “sanitize” in the present case was ambiguous in that it did not indicate when consumption was to take place. Relying on the testimony of Ecolab’s expert, the Court determined that the term “sanitize” in the context of meat processing did not require that the meat was fit for human consumption in its uncooked state. Thus, the Court held that 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 postcooking consumption.
The Court held that because FMC did not, via explicit or implicit disclaimer, limit the claims of the ’676 patent to the use of compositions containing PAA as the only antimicrobial agent, and because the claims of the ’676 patent did not require that PAA-treated meat be safe for immediate raw consumption, the Court affirmed the district court’s denial of Ecolab’s motion for JMOL of noninfringement.
The Federal Circuit next addressed FMC’s motions for JMOL of invalidity. FMC argued that the district court erred by denying its motion for JMOL that claim 7 of the ’729 patent was invalid as anticipated by a prior art publication (“Labadie”). FMC pointed to the testimony of its expert witness during the district court trial that explained how the Labadie article disclosed all of the limitations of the claim. Ecolab argued that, despite the expert testimony, the jury reasonably concluded that Labadie did not anticipate claim 7.
First, Ecolab asserted that the claimed method was distinct from Labadie because it was directed to applying PAA to meat in the complex setting of a processing plant. The Federal Circuit rejected this argument, noting that the claim was written broadly and was not limited to PAA treatment in a meat processing plant. The Court also rejected Ecolab’s assertion that its evidence of undue experimentation could overcome FMC’s strong evidence of anticipation. Finally, Ecolab argued that the claimed method was distinct from Labadie because Labadie teaches that each of two PAA treatment steps was followed by a trimming step, whereas the method claim recited that PAA treatment alone was sufficient to reduce the microbial population on meat. The Federal Circuit held that since Labadie disclosed that the meat was decontaminated by PAA treatment before the trimming steps were performed, and since Ecolab’s expert witness agreed that the Labadie method would kill bacteria on the surface of treated meat, the fact that Labadie disclosed additional trimming steps did not render the ’729 patent valid over Labadie. Because the jury verdict was not supported by substantial evidence, the Court reversed the district court’s denial of FMC’s motion for JMOL of invalidity.
The Court next addressed FMC’s motion for JMOL that claims 25-28 of the ’963 patent were invalid as obvious. The claims at issue in the ’963 patent required specified temperature, spray pressure, and contact time limitations. The Court noted that the prior art patent disclosed the temperature and contact time limitations. The parties’ dispute was limited to whether the particular spray pressure limitation of the ’963 patent claims was obvious. The Federal Circuit noted that Ecolab’s expert acknowledged that those skilled in the art recognized the advantages of spraying antimicrobial solutions onto meat at the pressure limitations recited in the ’963 patent and knew how to adjust application parameters to determine optimum parameters for a particular solution. The Court found that there was an apparent reason to combine the known elements of the prior art in the fashion claimed by the ’963 patent, because the advantages of spraying antimicrobial solutions onto meat at high pressure and methods for sanitizing meat with PAA were both known. The Court also found that the evidence of record indicated one skilled in the art would have known how to make this combination, and concluded that the claims at issue were invalid as obvious because they merely recited a combination of familiar elements to yield predictable results. Accordingly, the Court reversed the district court’s denial of FMC’s motion for JMOL of invalidity.
The Court next addressed FMC’s motion for JMOL of induced infringement. The Federal Circuit noted that 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; therefore, Ecolab lacked the intent required for induced infringement. Thus, the Court held that, 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 and therefore affirmed the district court’s denial of FMC’s motion for JMOL of induced infringement.
Both parties also argued on appeal that the district court erred in denying their respective motions for a permanent injunction. Because the Court determined that the claims asserted against FMC were invalid as a matter of law, it held that any error the district court committed regarding its consideration of Ecolab’s motion for injunctive relief was harmless. Regarding FMC’s assertion of error, the Court found that the district court failed to consider any of the factors set forth in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), for determining whether a party is entitled to injunctive relief. The Court concluded that because the district court decided FMC’s motion for injunctive relief without stating its reasons for denial, it abused its discretion. FMC argued that, even though the district court did not consider the eBay factors, FMC had nonetheless made the required showing that it was entitled to injunctive relief. However, the Federal Circuit declined to analyze the eBay factors in the first instance. Thus, the Court vacated the district court’s denial of FMC’s motion for a permanent injunction and remanded for the district court to perform the required eBay analysis.
Finally, the Court addressed FMC’s motion for prejudgment interest. FMC argued that the district court abused its discretion in denying its motion for prejudgment interest. The Federal Circuit recognized that when a patentee asserts a patent claim that is held to be valid and infringed, prejudgment interest is generally awarded. Because the district court gave no explanation for denying FMC’s motion, the Court ordered on remand that the district court must award interest or provide a valid justification for withholding interest.