Unitherm Food Systems, Inc. v. Swift Eckrich, Inc.
| Citation | 375 F.3d 1341 |
| Decision Date | 12 July 2004 |
| Docket Number | No. 03-1472.,No. 03-1473.,03-1472.,03-1473. |
| Parties | UNITHERM FOOD SYSTEMS, INC. and Jennie-O Foods, Inc., Plaintiffs-Appellees, v. SWIFT-ECKRICH, INC. (doing business as Conagra Refrigerated Foods), Defendant-Appellant. |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Burck Bailey, Fellers, Snider, Blankenship, Bailey & Tippens, of Oklahoma City, OK, argued for plaintiffs-appellees. With him on the brief were Greg A. Castro and Jay P. Walters. Also on the brief was Dennis D. Brown, of Tulsa, OK.
Robert A. Schroeder, Bingham McCutchen LLP, of Los Angeles, CA, argued for defendant-appellant. With him on the brief were Leigh O. Linder and Kevin K. Leung. Of counsel on the brief were John P. Passarelli and David H. Roe, McGrath North Mullin & Kratz, PC LLO, of Omaha, NE.
Before SCHALL, GAJARSA, and LINN, Circuit Judges.
Swift-Eckrich, Inc. (d/b/a ConAgra Refrigerated Foods) ("ConAgra") appeals the judgment of the United States District Court for the Western District of Oklahoma following a jury verdict, granting the claims of Unitherm Food Systems, Inc. ("Unitherm") and of Jennie-O Foods, Inc. ("Jennie-O") (collectively, "plaintiffs") that ConAgra was liable for attempted monopolization and for tortious interference with prospective economic advantage, and that same court's earlier partial summary judgment finding U.S. Patent No. 5,952,027 ("the '027 Patent") invalid and unenforceable under 35 U.S.C. § 102(b)1 and dismissing ConAgra's counterclaim for infringement. Unitherm Food Systems, Inc. & Jennie-O Foods, Inc., v. Swift-Eckrich, Inc., Case No. CIV-01-347-C (W.D.Okla, March 27, 2003).
The district court construed the disputed claim terms in the '027 Patent correctly, and properly found the '027 Patent invalid and unenforceable for reasons of both prior use and prior sale under 35 U.S.C. § 102(b). The district court was also correct, under Oklahoma law, in allowing the jury to decide the issue of tortious interference and in accepting the jury's findings on both liability and damages. The district court erred, however, in allowing the jury to decide Unitherm's antitrust claims despite the total absence of economic evidence capable of sustaining those claims. We therefore affirm-in-part, vacate-in-part, and remand to the district court for further proceedings consistent with this opinion.
On May 11, 1998, a ConAgra engineer named Prem Singh filed a patent application for "A Method for Browning Precooked Whole Muscle Meat Products" with the United States Patent and Trademark Office ("PTO"). That application became the '027 Patent, which the PTO issued to Singh on September 14, 1999. Singh assigned the patent to ConAgra.
In early 2000, ConAgra wrote to several companies who sell equipment and/or processes for preparing and browning precooked meats. ConAgra attached a copy of the '027 Patent to that letter, which included the explicit warning: "Others in the industry may approach your company regarding this patent, and we would appreciate it if you would inform them that we intend to aggressively protect all of our rights under this patent."
Unitherm, which describes itself as "a manufacturer and supplier of equipment and processes used in the food industry," did not receive one of ConAgra's letters. Unitherm, however, believed — and asserts as the basis of this suit — that its President, David Howard, had conceived the process claimed in the '027 Patent and reduced it to practice as the "Unitherm process" no later than September 1993.
In July 2000, ConAgra sent out another round of letters, this set to its direct competitors in the pre-cooked meats business. ConAgra attached both a copy of the patent and a blank license to this letter, and announced that it was "making the '027 Patent and corresponding patents that may issue available for license at a royalty rate of 10¢ per pound, adjusted for inflation, to all responsible parties who have not infringed these patents." No one licensed the '027 Patent on these or any other terms.
Jennie-O (a division of Hormel), a direct ConAgra competitor in the pre-cooked meats business, received one of these letters. Some time earlier, Jennie-O had installed Unitherm equipment at its plant in Montevideo, MN, where it used the Unitherm process to brown roughly 18,000,000 pounds of meat per year. Upon receiving ConAgra's letter, Jennie-O undertook an investigation to determine its rights and responsibilities. Jennie-O executives later testified that their investigation led them to conclude that the Unitherm process and the '027 Patent process were one and the same, that David Howard had invented that process no later than 1993, and that unless a court invalidated the '027 Patent, Jennie-O would be infringing it by using the Unitherm process. According to Jennie-O executive Robert Wood, ConAgra's letter had "a chilling effect on any further possibility of Unitherm selling its products to Jennie-O."
On February 23, 2001, Unitherm and Jennie-O together sued ConAgra alleging numerous causes of action. Only three causes of action are relevant to this appeal: (1) a Declaratory Judgment Action for invalidity and unenforceability of the '027 Patent; (2) a state law claim for tortious interference with Unitherm's prospective economic relationships; and (3) Unitherm's Walker Process claim that ConAgra violated Section 2 of the Sherman Act.2 All of the plaintiffs' other claims were either dismissed or otherwise resolved in ways that the parties do not appeal. In addition, ConAgra counterclaimed that Jennie-O infringed the '027 Patent. The district court granted Jennie-O summary judgment of noninfringement. ConAgra does not appeal the summary judgment of noninfringement.
Both parties moved for dismissal of and/or for summary judgment on various claims. The district court first considered the plaintiffs' claim that the '027 Patent is invalid and unenforceable under § 102(b). The '027 Patent includes 36 claims. Claims 1 and 20 are independent. The other 34 claims are dependent. The independent claims read:
1. A process for browning precooked, whole muscle meat products comprising: coating a browning liquid pyrolysis product onto at least a portion of the surface of a precooked whole muscle meat product; and then exposing the coated surface to an energy source and selectively heating the coated surface of the whole muscle meat product at a temperature and for a time sufficient to develop a golden-brown color on the exposed surface, without substantial shrinking the precooked, whole muscle meat product.
'027 Patent, col. 8, ll. 4-14 (emphasis added).
20. A process for browning a precooked chicken breast or a turkey breast comprising: coating at least a portion of the surface of a precooked chicken breast or a precooked turkey breast with from about 0.05 to about 1.0 wt. %, based on the weight of the breast, of a browning liquid pyrolysis product obtained from hardwoods or sugars; and then selectively heating the coated surface of the breast in an environment having a temperature greater than about 60[deg] C. with energy provided by a circulating air oven, an impinging air oven, a laser light source, a medium wavelength energy infra red radiation source or a source of microwave radiation for a time sufficient to develop a golden-brown color on the coated surface, where the shrinkage of the precooked, whole muscle meat product is less than 4 wt. % based on the initial weight of the meat product.
'027 Patent, col. 9, ll. 17-33 (emphasis added). All of the remaining claims represent minor variations on these themes; they vary heat source temperatures, core meat temperatures, amounts of shrinkage, browning liquids for pyrolysis, amounts of browning product, masking/flavoring agents, and energy sources.
Though ConAgra, in its brief opposing the motion for summary judgment, stressed the importance of having the district court construe all disputed claim limitations, it failed either to identify disputed claim terms or to submit specific interpretations of claim terms. Instead, ConAgra countered the plaintiffs' interpretation of the claim language with little other than a sweeping objection. The sole claim term in the '027 Patent that ConAgra disputed explicitly was "golden brown." Nevertheless, ConAgra argues on appeal that "claim construction could not be properly addressed without a separate hearing, given stringent page limitations...."
The district court provided a formal construction for only the single term that ConAgra had actually disputed: "golden brown." ConAgra contends (and the plaintiffs do not dispute) that "[t]he `golden-brown' limitation is obviously the heart of the '027 patent." The heart of the dispute over this term both below and on appeal, in turn, is whether or not the proper construction of "golden brown" flows from the term's plain meaning. The plaintiffs argued that it does. ConAgra, on the other hand, noted that the patent's five illustrative examples all included Hunter-Lab Color Meter measurements to describe color, asserted that construction according to plain meaning was therefore misplaced, and proposed a more technical definition gleaned from the examples.
The district court first reviewed the intrinsic evidence to determine that Having failed to find a precise meaning in the intrinsic evidence, the district court turned to Webster's Third New International Dictionary 975 (1986) as a source of plain meaning, and formally construed "golden brown" as "a variable color averaging a strong brown that is yellower and slightly darker...
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