Cultor Copr. v. A.E. Staley Manufacturing
| Citation | 224 F.3d 1328,56 USPQ2d 1208 |
| Parties | (Fed. Cir. 2000) CULTOR CORPORATION and CULTOR FOOD SCIENCE, INC.,Plaintiffs-Appellants, v. A.E. STALEY MANUFACTURING COMPANY, Defendant-Appellee. 99-1232 DECIDED: |
| Decision Date | 21 September 2000 |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Judge John S. Martin, Jr. Kelly L. Morron, Brobeck, Phleger, & Harrison, LLP, of New York, New York, argued for plaintiffs-appellants. With her on the brief were James J. Elacqua, Beth D. Jacob, and Robert G. Kramer.
Salem M. Katsh, Shearman & Sterling, of New York, New York, argued for defendant-appellee. With him on the brief were James R. Warnot, Jr. and Antoinette E. Baker.
Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.
Cultor Corporation and Cultor Food Science, Inc. (together, "Cultor") appeal the decisions of the United States District Court for the Southern District of New York 1 granting summary judgment that the A.E. Staley Mfg. Co. ("Staley") does not infringe the asserted claims of either of United States patents Nos. 5,667,593 ("the '593 patent") and 5,645,647 ("the '647 patent") and denying leave to amend the complaint. We affirm the decisions of the district court.
The '593 and '647 patents, both of which are entitled "Modified Polydextrose and Process Therefor," are directed to "an improved, water-soluble polydextrose containing 0.3 mol % or less of bound citric acid, a process therefor, and foods containing same." Polydextrose is a low-calorie replacement for flour and sugar that is often used to replace some of the bulk that is lost when artificial sweeteners are substituted for sugar in cakes or like products. Staley manufactures polydextrose and sells it with the brand name "Sta-Lite III."
Commercial manufacture of edible polydextrose originated with a process developed by Hans H. Rennhard. The Rennhard process includes the step of heating dextrose in the presence of a catalytic amount of citric acid. The polydextrose thereby produced has a slightly bitter taste. Donald Guzek et al., the inventors of the '539 and '647 patents, discovered that the bitter taste could be remedied by passing the final polydextrose, in aqueous solution, through an ion-exchange resin. The patents at issue are directed to this process. The claims in suit of the '593 patent follow:
24. A polydextrose composition substantially free of bitter-tasting residual compounds made by the process consisting essentially of:
a) dissolving polydextrose in water;
b) passing said solution through an ion-exchange column; and
c) collecting and concentrating the eluate produced thereby until a commercially useful polydextrose composition is recovered.
32. A polydextrose bulking agent useful for incorporation in reduced calorie foods, substantially free of bitter-tasting compounds.
33. The polydextrose composition according to claim 32 wherein said bitter-tasting compounds are acidic.
Claim 24 of the '647 patent is also in suit:
24. A method for the purification of polydextrose consisting essentially of:
a) dissolving polydextrose in water;
b) passing said solution through an ion exchange column; and
c) collecting and concentrating the eluate produced thereby until a substantially functional product is recovered.
The specifications of the patents explain that the bitter taste is due to the use of citric acid in the Rennhard process, and that some citric acid remains bound to the product. The ion-exchange procedure removes this bound acid.
The process by which Staley makes its polydextrose also includes the step of heating polydextrose in the presence of an acid catalyst, and Staley also passes its final polydextrose through an ion-exchange resin. However, Staley uses phosphoric acid instead of the citric acid of the Rennhard process. Cultor sued Staley for infringement of the Guzek patents, charging that the claims literally read on the Staley process and product. Staley responds that the claims must be interpreted as limited to polydextrose produced using citric acid, pointing to the following description in the patent specifications:
As used herein, the expression "water-soluble polydextrose" (also known as polyglucose or poly-D-glucose) specifically refers to the water-soluble polydextrose prepared by melting and heating dextrose (also known as glucose or D-glucose), preferably with about 5-15% by weight of sorbitol present, in the presence of a catalytic amount (about 0.5 to 3.0 mol %) of citric acid.
'593 patent, col. 1, lines 24-30. The district court agreed with Staley and granted summary judgment of non-infringement, ruling that the definition of "water-soluble polydextrose" in the specification limited the claims to polydextrose produced with citric acid as a catalyst.
Cultor also asserted infringement under the doctrine of equivalents, arguing that even if the claims are deemed limited to the specification's definition of polydextrose prepared using a citric acid catalyst, citric and phosphoric acid are interchangeable in the Rennhard polydextrose process, and both are removed by the ion-exchange treatment.
The district court, reviewing the prosecution histories of the patents in suit, found that the inventors had repeatedly distinguished their invention from the prior art by emphasizing their discovery that citric acid caused the bitterness in polydextrose produced by the Rennhard process and that such bitterness could be removed by removing the residual citric acid by means of an ion-exchange resin. The court concluded that to permit Cultor's claims the scope now requested would ensnare the prior art and permit Cultor to patent an "invention" which was no more than "a desirable result." Cultor challenges these conclusions, stating that its claims are not limited to any particular acid, and that the claims define the patented invention. Cultor also states that in all events, phosphoric and citric acid are equivalent catalysts for this process, and the ion exchange procedure removes either bound acid.
Cultor argues that the Rennhard process is not limited to a citric acid catalyst and points out that the original Rennhard patent (now expired) lists ten possible acid catalysts. However, the Guzek patents do not define their polydextrose purification process in terms of any acid catalyst, but only in terms of a citric acid catalyst. By explicitly limiting the subject matter to that produced using a citric acid catalyst, the inventors limited their claimed invention. The district court applied the inventors' own definition of the term "water-soluble polydextrose" as a limitation to the claims.
Whether a claim must, in any particular case, be limited to the specific embodiment presented in the specification, depends in each case on the specificity of the description of the invention and on the prosecution history. These sources are evaluated as they would be understood by persons in the field of the invention.
The Guzek patents describe an improvement of the Rennhard process, explaining the problem that they discovered was caused by the use of citric acid as the catalyst. Guzek teaches how to solve the problem by a specific method of removing the citric acid. The inventors described their invention narrowly and with specificity. Staley states that its phosphoric acid does not produce a bitter taste and raise the same problem solved by Guzek, but that the phosphoric residue must be removed to meet purity standards set by the Food and Drug Administration. Staley argues that ion-exchange is a conventional method of removing phosphoric acid, and that if the Guzek claims were to be interpreted to encompass this conventional usage, they would be invalid as embracing the prior art. The district court agreed.
We discern no error in the district court's construction of the claims as including the definition of "water-soluble polydextrose" in the specification. Having explicitly defined this term as limited to that prepared with a citric acid catalyst, this effected a disclaimer of the other prior art acids. Claims are not correctly construed to cover what was expressly disclaimed. Thus we affirm the district...
To continue reading
Request your trial
-
Aguayo v. Universal Instruments Corp., CIV.A.H-02-1747.
...read the claims ... to encompass data transmission over a packet-switched network such as the Internet."); Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1331 (Fed.Cir.2000) ("Whether a claim must, in any particular case, be limited to the specific embodiment presented in the specific......
-
Astra Aktiebolag v. Andrx Pharmaceuticals, Inc.
...reference to the specification, might be considered broad enough to encompass the feature in question."); Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1331 (Fed.Cir.2000). Defendants' reliance on these cases is misplaced, however, for they failed to take into account the relevant po......
-
Wolfchild v. United States
...L.C. v. Pigmentors Vegetales Del Centro S.A. de C.V., 464 F.3d 1339, 1354-55 (Fed. Cir. 2006); see also Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1333 (Fed. Cir. 2000) ("[Plaintiff] has not made a colorable argument of possible success . . . . Futility was apparent, and is adequa......
-
Innova/Pure Water v. Safari Water Filtration
...this is a nonpatent matter where we apply the law of the circuit in which the district court sits. See Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1332-33 (Fed.Cir.2000). This appeal is from the middle district of Florida, within the eleventh circuit, which reviews the refusal of l......
-
The Federal Circuit and Claim Construction: Resolving the Conflict Between the Claims and the Written Description
...(Fed. Cir. 2000). 23 Wang Labs, Inc. v. Am. Online, Inc., 197 F.3d 1377, 1383 (Fed. Cir. 1999). 24 Cultor Corp. v. A.E. Staley Mfg. Co., 224 F.3d 1328, 1331 (Fed. Cir. 25 O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1581 (Fed. Cir. 1997). 26 Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295......
-
Is the Federal Circuit succeeding? An empirical assessment of judicial performance.
...the holistic methodological approach is more difficult to clearly discern from the cases. See also Cultor Corp. v. A.E. Staley Mfg., 224 F.3d 1328, 1331 (Fed. Cir. 2000) ("Whether a claim must, in any particular case, be limited to the specific embodiment presented in the specification, dep......