840 F.2d 902 (Fed. Cir. 1988), 87-1308, Grain Processing Corp. v. American Maize-Products Co.

• Date: 17 February 1988
• Citation: 840 F.2d 902
• Docket Number: 87-1340.,87-1308
• Parties: 5 U.S.P.Q.2d 1788 GRAIN PROCESSING CORPORATION, Plaintiff-Appellant, v. AMERICAN MAIZE-PRODUCTS COMPANY, Defendant/Cross-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

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840 F.2d 902 (Fed. Cir. 1988)

5 U.S.P.Q.2d 1788

GRAIN PROCESSING CORPORATION, Plaintiff-Appellant,

v.

AMERICAN MAIZE-PRODUCTS COMPANY, Defendant/Cross-Appellant.

Nos. 87-1308, 87-1340.

United States Court of Appeals, Federal Circuit

February 17, 1988

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[Copyrighted Material Omitted]

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John J. Cavanaugh, of Neuman, Williams, Anderson & Olson, Chicago, Ill., argued for plaintiff-appellant. With him on the brief was Gregory B. Beggs, of Neuman, Williams, Anderson & Olson.

William D. Lucas, of Lucas & Just, New York City, argued for defendant/cross-appellant.

Before FRIEDMAN and MAYER, Circuit Judges, and SKELTON, Senior Circuit Judge.

OPINION

MAYER, Circuit Judge.

These are cross-appeals from a decision of the United States District Court for the Northern District of Indiana that claims 11-14 of United States Letters Patent No. 3,849,194 ('194 patent) were valid and infringed by the ARD 2370 product made by American Maize-Products Co. The court held, however, that Maize's Fro-Dex 5 and Fro-Dex 10 products did not infringe. We reverse the determination that Fro-Dex 10 did not infringe claims 12-14, and remand for consideration of whether increased damages and attorney fees should be awarded. All other aspects of the district court's decision are affirmed.

Background

This case is about starch conversion products known as starch hydrolysates. The patented hydrolysates, which are low in sweetness and taste bland, can be used as carriers for synthetic sweeteners and as bulking agents in synthetic creams and coffee whiteners.

Frederick C. Armbruster and Earl R. Kooi developed the patented products in response to the interest of the food industry in obtaining a starch hydrolysate that would be "soluble in cold water, non-hygroscopic, give clear solutions, [and] be bland in flavor and colorless." They filed their original patent application on December 19, 1966. Obtaining the patent was difficult, however, and the prosecution history is littered with rejections by the Patent and Trademark Office (PTO) and an unsuccessful appeal to the Board of Patent Appeals and Interferences. Finally, on November 19, 1974, the '194 patent was issued.

The patent consists of ten process claims and four product claims. Grain Processing Corp. (GPC), the assignee of the patent, originally charged American Maize-Products Co. (Maize) with infringement of all 14 claims. Before trial, however, GPC withdrew charges of infringement of the process claims but continued to assert infringement of the product claims, claims 11-14. They read as follows:

11. A waxy starch hydrolysate having a dextrose equivalent value between 5 and 25 and a saccharide composition wherein the amount of DP(1) is in the range of from about 0.1 percent by weight, to about 2.4 percent by weight, dry basis, and the amount of DP(2) is in the range of from about 1.3 percent to about 9.7 percent by weight, dry basis, said hydrolysate being further characterized as producing a fluid solution free of opacity (exceptional clarity and complete lack of opaqueness) when the hydrolysate is added to water at solids concentrations specified below:

DEXTROSE EQUIVALENT OF SOLIDS WAXY STARCH CONCENTRATION HYDROLYSATE PERCENT BY WEIGHT ----------------------------------------- 10 65-70 20 75 25 80 ----------------------------------------- 12. A waxy starch hydrolysate having

a dextrose equivalent value between about 5 and about 25,

a descriptive ratio greater than about 2, said descriptive ratio being the quotient obtained by dividing the sum of the percentage of saccharides, dry basis, having a degree of polymerization of 1 to 6, by the dextrose equivalent value,

a monosaccharide content in the range of from about 0.1 percent by weight to about 2.4 percent by weight, dry basis,

a disaccharide content in the range of from about 1.3 percent to about 9.7 percent, by weight, dry basis, and

being further characterized as capable of producing an aqueous solution of exceptional clarity and substantially complete

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lack of opaqueness when said hydrolysate is added to water.

13. A waxy starch hydrolysate in accordance with claim 12, having a moisture content of less than 15 percent, by weight.

14. A waxy starch hydrolysate in accordance with claim 12, having a mositure [sic] content of about 4 percent, by weight and being further characterized as being a waxy starch hydrolysate syrup solid product which is substantially 100 percent soluble and capable of forming an aqueous solution completely free of haze.

Maize denied infringement and counterclaimed that the '194 patent was invalid under 35 U.S.C. Sec. 112, was anticipated by the prior art under 35 U.S.C. Sec. 102, and was obvious over the prior art under 35 U.S.C. Sec. 103. It also claimed the patent was unenforceable because of inequitable conduct by GPC's predecessor, Corn Products Co.

The issues of liability and damages were bifurcated and a 32-day trial on liability followed. The district court held that Maize had not shown there was a case or controversy over the ten process claims because there was no reasonable apprehension that it would be sued for infringement of those claims. It concluded further that Maize had not proven the four product claims were invalid. In the court's view, the '194 patent did not violate section 112 because the terms of the product claims were sufficiently definite and precise. The court also held that the invention was not anticipated by the prior art because Wallerstein, the alleged anticipating source, did not have the claimed invention's capacity to produce starch hydrolysates that remained haze-free over time.

As to Maize's attempt to invalidate the patent as obvious in light of the prior art under section 103, the district court decided that the references, either alone or in combination, did not teach or suggest the patented invention. Furthermore, there had been no showing that the predecessor Corn Products Co. had violated the prohibition in section 102(b) against public use of a product more than one year prior to the patent application.

On infringement, the district court concluded that one accused product, ARD (Fro-Dex) 2370, infringed each of the four product claims of the '194 patent. It found, however, that the two remaining accused products, Fro-Dex 5 and Fro-Dex 10, did not infringe any of the product claims.

The primary basis for the court's finding of no infringement was that, when read in light of the specification and the prosecution history, the '194 patent required "exceptional long-term clarity." The accused products led to initially clear solutions, but the court said there was no showing that they remained clear for an appreciable length of time. Because long-term clarity was "of the essence in" the patent, the court concluded neither Fro-Dex 5 nor Fro-Dex 10 infringed.

Discussion

The only issue raised by GPC on appeal is whether the district court erred in holding that the Fro-Dex 10 product did not infringe claims 11-14. Maize, on the other hand, raises a wide variety of questions, most of which address the validity of the '194 patent. We turn first to validity.

Validity

A. Process Claims. As a preliminary matter, we address Maize's contention that the district court erred in holding that there was no case or controversy over the ten process claims. Maize says it was entitled to a declaratory judgment of invalidity on those claims because the original complaint filed by GPC alleged they were infringed.

There is no question that a case or controversy is a jurisdictional predicate for declaratory judgment under 28 U.S.C. Sec. 2201. Jervis B. Webb Co. v. Southern Sys., Inc., 742 F.2d 1388, 1398, 222 USPQ 943, 949 (Fed.Cir.1984); see also Windsurfing Int'l, Inc. v. AMF, Inc., 828 F.2d 755, 757, 4 USPQ2d 1052, 1054-55 (Fed.Cir.1987). And "an actual controversy must be extant at all stages of review, not merely

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at the time the complaint is filed." Preiser v. Newkirk, 422 U.S. 395, 401, 95 S.Ct. 2330, 2334, 45 L.Ed.2d 272 (1975). The actual controversy requirement precludes a declaration about the validity of claims unless the defendant objectively has a "reasonable apprehension that it will face an infringement suit" on those claims. Webb, 742 F.2d at 1388, 222 USPQ at 949; International Medical Prosthetics Research Assoc. v. Gore Enterprise Holdings, Inc., 787 F.2d 572, 575, 229 USPQ 278, 281 (Fed.Cir.1986).

Here, Maize has no "reasonable apprehension" it will face an infringement suit on the process claims. GPC abandoned its charge that Maize had infringed them prior to trial, and since then has "steadfastly refused to assert infringement" of those claims. There is also nothing in the record to suggest that Maize will be faced with a similar infringement suit in the future. Therefore, no case or controversy surrounds them, and the district court correctly refused to consider a declaratory judgment of invalidity. Cf. Medical Prosthetics, 787 F.2d at 575, 229 USPQ at 280 (existence of case or controversy must be determined from the "totality of the circumstances").

B. Product Claims. Recognizing the statutory presumption that a patent is valid, 35 U.S.C. Sec. 282, the district court upheld the validity of the four product claims. Maize attacks this holding, but it has shown no error.

1. Public Use. Section 102(b) precludes "attempts by the inventor or his assignee from commercially exploiting [an] invention more than a year before the application for patent is filed." Western Marine Elec., Inc. v. Furuno Elec. Co., 764 F.2d 840, 845, 226 USPQ 334, 337 (Fed.Cir.1985). Maize says that statute was violated here because GPC's predecessor, Corn Products Co., put its product into public use more than one year prior to the application for the '194 patent. We disagree.

" 'Public use' of a claimed invention under section 102(b) has been defined as any use of that invention...