HC Baxter & Bro. v. Great Atlantic & Pacific Tea Company

• Decision Date: 10 December 1964
• Docket Number: Civ. No. 7-136.
• Citation: 236 F. Supp. 601
• Parties: H. C. BAXTER & BRO., a partnership, and General Foods Corporation, a corporation of Delaware, Plaintiffs, v. The GREAT ATLANTIC & PACIFIC TEA COMPANY, Inc., a corporation of Maryland, Defendant.
• Court: U.S. District Court — District of Maine

236 F. Supp. 601

H. C. BAXTER & BRO., a partnership, and General Foods Corporation, a corporation of Delaware, Plaintiffs, v.The GREAT ATLANTIC & PACIFIC TEA COMPANY, Inc., a corporation of Maryland, Defendant.

Civ. No. 7-136.

United States District Court D. Maine, S. D.

December 10, 1964.

Paul A. Wescott, Daniel T. Drummond, Jr., Portland, Me., and W. Brown Morton, New York City, for plaintiffs.

William B. Mahoney, Portland, Me., Nicholas J. Stathis and John T. Kelton, New York City, for defendant.

GIGNOUX, District Judge.

This is an action for infringement of United States Letters PatentNo. 2,498,024, entitled "Prefrying Treatment of Potatoes," issued on February 21, 1950, to John L. Baxter of Brunswick, Maine, upon application SerialNo. 689,205 filed on August 8, 1946.The action was instituted on December 26, 1962, by the then owner of the patent, H. C. Baxter & Bro.Subsequently, on January 7, 1963, H. C. Baxter & Bro. assigned to General Foods Corporation an undivided 13% interest in the patent, and on February 14, 1964, General Foods was joined as a partyplaintiff.Plaintiffs rely only upon claims 1, 6 and 7 of the patent.In its answer, defendant asserts the customary defenses of invalidity and non-infringement.Defendant also counterclaims for a declaratory judgment that the patent is invalid and not infringed by it, and for a reasonable attorneys' fee and its costs.Plaintiffs seek an accounting, and both parties request appropriate injunctive relief.

As described in the patent specifications, the claimed invention "relates to the treatment of raw or cooked potato particles and particularly to such particles in the form of strips for French frying, in order to secure a desired and substantially uniform change in their color when they have been suitably cooked by frying."(Pat. Col. 1, lines 1-6).The specifications recite that in the frying of potatoes on a commercial basis, it is important that they be suitably browned when fried; and whether suitable browning can be attained depends on their sugar content.(Pat. Col. 1, lines 7-11).Where the sugar content of the potatoes is low, as is the case when the potatoes are freshly dug, the potato particles do not change color sufficiently when cooked by frying.On the other hand, if the sugar content of the potatoes is high, the particles when suitably fried are too dark because of the caramelization of the sugar.¹(Pat. Col. 1, lines 12-26).While the sugar content of potatoes may be governed to some extent through a control of storage temperatures,² the expense of controlling storage conditions is substantial.(Pat. Col. 1, lines 29-37).The alleged invention purports to minimize the problem "by treating raw or cooked potato particles to establish, at least in the surface layer of the particles, a sugar content such that when the particles are suitably cooked by frying, the desired color change will result with substantial uniformity."(Pat. Col. 1, lines 40-46).This result is stated to be accomplished by immersing the particles in a solution of a sugar that may be absorbed by the particles and then cooking them by frying in a suitable medium, the characteristics of the solution, the time of immersion, and the frying time and temperature being so related to each other and to the natural sugar content of the particles that the desired color change is attained upon frying.(Pat. Col. 1, line 46-Col. 2, line 6).In the patentee's own words,

"Where the natural sugar content is low, the treatment adds sugar to supplement any natural sugar that may be present in the particles.Where the natural sugar content is high but capable of being corrected by leaching, I dip the particles in a hot sugar solution so that at the completion of the leaching step a final sugar content is established that ensures that the desired color is secured when the particles are fried.Where the natural sugar content of some of the potatoes is high and too low in others, the hot sugar solution has a combination effect establishing and maintaining substantial unformity of sugar content by a limited leaching action on the particles having excessive natural sugar and supplementing any natural sugar in particles having a sugar deficiency."(Pat. Col. 2, lines 7-23).

The patent specifications recite that while the sugar content of the potato particles may be determined by any suitable means, this may be done with sufficient accuracy for the purposes of the invention by frying samples under the conditions to be used in frying the particular batch of potatoes and comparing the color of the thus fried samples with a color chart showing the sugar content by color pre-established by frying various samples under uniform conditions of time and temperature.(Pat. Col. 2, lines 24-41).

The specifications further state that the primary requirement of the sugar is that it be readily absorbed by the potato particles.(Pat. Col. 3, lines 51-52).Suitable sugars are specified to be, in the class of monosaccharides, dextrose, fructose and galactose; in the class of disaccharides, sucrose, lactose and maltose; and raffinose, a trisaccharide.(Pat. Col. 3, lines 53-56).The patent states that while any of these sugars may be used, dextrose "is perhaps best suited for the practice of * * * the invention under commercial conditions."(Pat. Col. 3, lines 57-60).The sugar solution may vary within substantial ranges "as between .25% to 10% by weight of the sugar to the water"; the preferred range is from .25% to 3%. (Pat. Col. 3, lines 61-64).The immersion time may also vary from ¼ to 5 minutes, but an immersion time of 1 to 3 minutes is preferred.(Pat. Col. 3, lines 71-74).While the temperature of the solution may range from just above its freezing point to its boiling point, the preferred range is between 60° F. and its boiling point.(Pat. Col. 3, line 74-Col. 4, line 3).The specifications state that the higher temperatures are not necessary except where a leaching action is required.(Pat. Col. 4, lines 6-8).The patentee recommends a frying time of 4½ minutes and a frying temperature of 360° F., although stating that satisfactory results are obtainable within the range of 300° to 425° F. (Pat. Col. 3, lines 8-15).Finally, the specifications recite that in practice the patentee uses a 1% dextrose solution at its boiling point and varies the dipping time in relation to the natural sugar content of the potato particles, utilizing a 1 minute dip where the natural sugar content of the particles is uniformly low; increasing the immersion time to 3 minutes if their natural sugar content is low to medium; and using a 2 minute dip if the raw potatoes are of mixed low and high natural sugar content.(Pat. Col. 4, lines 22-37).

The patent claims in suit read:

"1.The method of treating potato particles, the natural sugar content of which is such that the desired color change cannot be attained when the particles are cooked by frying, which method comprises preparing a solution of a sugar that may be absorbed by the particles and in which the percentage by weight of the sugar to the liquid is within the range of .25% to 3%, immersing the particles in the solution for a period of from 1 to 3 minutes to affect the sugar content in at least the surface layers of the particles, and frying the thus treated particles in a frying medium at a temperature within the range of 300° to 425° F.

"6.The method of treating potato particles, the natural sugar content of which is too low to enable the desired color change to be attained when the particles are cooked by frying, which method comprises preparing a solution of a sugar that may be absorbed by the particles and in which the percentage by weight of the sugar to the liquid is from .25% to 3%, and immersing the particles in that solution for a time inverse to its concentration and within the range of from 1 to 3 minutes, thereby to secure a desired substantially uniform color change when the particles are cooked by frying.

"7.The method of claim 6 in which the sugar is a monosaccharide such as dextrose, fructose, and galactose."

A brief statement of the development and commercial history of the Baxter process will be helpful to an understanding of the patent questions which are presented in this litigation.The evidence discloses that H. C. Baxter & Bro. is a business partnership, which, with its predecessor partnerships, has been engaged in producing and marketing food products for many years.Baxter's original products were canned vegetables, but during World War II one of its major products was dehydrated potatoes for the United States Army.In 1944, with the end of World War II approaching, the partnership established a products development committee to find other products which might utilize its potato handling facilities.After limited experimentation with canned French fried potatoes, the Baxter management decided to develop a process for the commercial production of frozen French fried potatoes; and by the fall of 1945 the firm was devoting most of its research to this endeavor.Baxter's quality control manager, Francis R. Saunders, was in charge of the project under Mr. Baxter's general supervision.

One of the first problems encountered by the partnership in developing a process for the commercial production of frozen French fried potatoes was that of obtaining a satisfactory brown color in the finished product.Saunders found that the freshly dug potatoes he was using in his experiments turned out almost white in color when fried.Mr. Baxter recalled that during the early 1930's the partnership had attempted to reduce the cost of producing its canned cream-styled corn by substituting dextrose for sucrose as a sweetening agent, but that it had been forced to abandon the practice because the dextrose had had the undesired effect of darkening the color of the creamed corn.At a staff meeting in November 1945he suggested that a satisfactory...