Procter & Gamble Co. v. Nabisco Brands, Inc., Civ. A. No. 84-333 LON.

• Decision Date: 04 April 1989
• Docket Number: Civ. A. No. 84-333 LON.
• Court: U.S. District Court — District of Delaware
• Parties: The PROCTER & GAMBLE COMPANY, Plaintiff, v. NABISCO BRANDS, INC., Keebler Company and Frito-Lay, Inc., Defendants.

711 F. Supp. 759

The PROCTER & GAMBLE COMPANY, Plaintiff, v. NABISCO BRANDS, INC., Keebler Company and Frito-Lay, Inc., Defendants.

Civ. A. No. 84-333 LON.

United States District Court, D. Delaware.

April 4, 1989.

Robert H. Richards, III, Richards, Layton & Finger, Wilmington, Del. (Jerome G. Lee, Harry C. Marcus, John F. Sweeney, Christopher A. Hughes, of Morgan, Finnegan, Pine, Foley & Lee, New York City, Julius P. Filcik, Rose Ann Dabek, Richard C. Witte, of The Procter & Gamble Co., Cincinnati, Ohio, of counsel), for plaintiff.

Douglas E. Whitney, Mary Graham, of Morris, Nichols, Arsht & Tunnell, Wilmington, Del. (Edward W. Greason, William J. Ungvarsky, Paul H. Heller, Richard M. Rosati, Richard L. DeLucia, Wayne A. Jones, of Kenyon & Kenyon, New York City, of counsel), for defendant Nabisco Brands, Inc.

Howard M. Handelman, of Bayard, Handelman & Murdoch, Wilmington, Del., Daniel M. Riess, David Lesht, of Lockwood, Alex, FitzGibbon & Cummings, Chicago, Ill., Craig S. Stevens, Walter S. Maker, of Keebler Co., Elmhurst, Ill., for defendant Keebler Co.

James F. Burnett, Esquire of Potter, Anderson & Corroon, Wilmington, Del. (Wayne M. Harding, Paul M. Janicke, Peter J. Shurn III, of Arnold, White & Durkee, Houston, Tex., Ronald R. Kranzow, Terrence D. Dreyer, Thomas P. Schur, of Frito-Lay, Inc., Dallas, Tex., of counsel), for defendant Frito-Lay, Inc.

OPINION

LONGOBARDI, District Judge.

I. NATURE AND STAGE OF THE PROCEEDINGS

The Plaintiff Procter and Gamble ("P & G") brought three separate actions against Defendant Nabisco Brands, Inc. ("Nabisco"), Defendant Keebler Company ("Keebler") and Defendant Frito-Lay, Inc. ("Frito-Lay") alleging infringement of U.S. Patent No. 4,455,333 (the "'333 Patent"), inducement of patent infringement and unfair competition. The complaint was filed on June 19, 1984, the date that the '333 Patent was issued to P & G for a cookie invention by two of its employees, Charles A. Hong and William J. Brabbs. The patent is entitled "Doughs and Cookies Providing Storage — Stable Texture and Variability." The claims of the '333 Patent at issue in this motion cover, in general, (1) the cookie ingredients or starting materials used to produce the patented cookie product; (2) a method of laminating two layers of cookie dough preforms together; and (3) the resultant product, a dual-textured cookie that is crispy on the outside and chewy on the inside manufactured by baking and tempering the laminated dough structure. P & G markets this dual-textured cookie under the Duncan Hines label.

The Defendant Nabisco markets its own line of dual-textured cookies under the "Almost Home" and "Chewy Chips Ahoy" labels. The Defendant Keebler manufactures a crispy and chewy cookie under the "Soft Batch" label. The Defendant Frito-Lay also produces a cookie with textual variability for its "Grandma's Rich and Chewy" brand of cookies. Each of the three Defendants has denied that their products infringe the '333 Patent and also denied P & G's allegations of unfair competition. In addition, each of the three Defendants has pleaded, inter alia, the various defenses of patent invalidity and unenforceability. Each of the Defendants has also filed declaratory judgment counterclaims asserting that all the claims of the '333 Patent are invalid and unenforceable.

Currently before the Court are three motions for partial summary judgment, one by Nabisco and two by Frito-Lay. In its motion, Docket Item ("D.I.") 227, Nabisco alleges that claims 19, 29 and 35 of the '333 Patent are invalid under 35 U.S.C. § 102(b) as anticipated by the Railroad Cookie recipe ("Railroad Cookie") which was published in a 1968 cookbook entitled Food that Really Schmecks. D.I. 228A, Exhibit 2 at A27-A28. At oral argument, this Court denied Defendant Nabisco's motion with respect to claims 19 and 29 but reserved decision with regard to the validity of claim 35. D.I. 641. In the second motion for summary judgment, D.I. 244, Frito-Lay contends that even if the final cookie product is novel, the method claims 35, 36, 37 and 45 used to manufacture the cookie are obvious and, therefore, unpatentable based upon the Federal Circuit's holding in In Re Durden, 763 F.2d 1406, 1408 (Fed.Cir. 1985). Finally, Frito-Lay has moved for partial summary judgment that claim 35 is invalid under 35 U.S.C. § 102(g) and that the entire '333 Patent is unenforceable due to alleged inequitable conduct by P & G before the U.S. Patent and Trademark Office (the "PTO"). D.I. 318. The Court will discuss each of the Defendants motions separately in this opinion.

II. SUMMARY JUDGMENT

Summary judgment is appropriate in patent cases as in other cases under Rule 56(c), which provides that summary judgment "shall be rendered forthwith if the pleadings, depositions, answers to interrogatories and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ. P. 56(c). In deciding a motion for summary judgment, the Court must view the evidence in a light most favorable to the non-moving party. SRI Intern. v. Matsushita Elec. Corp. of America, 775 F.2d 1107, 1116 (Fed.Cir.1985); Martin v. Barber, 755 F.2d 1564, 1566 (Fed.Cir.1985). In addition, the Court must draw all reasonable inferences in favor of the non-moving party and must resolve all doubt over factual issues in favor of the party opposing summary judgment. Moeller v. Ionetics, Inc., 794 F.2d 653, 656 (Fed.Cir.1986) (citing SRI Intern., 775 F.2d at 1116). "By its very terms, this standard provides that the mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2509-10, 91 L.Ed.2d 202 (1986). As to the materiality requirement, "the substantive law will identify which facts are material;.... factual disputes that are irrelevant or unnecessary will not be counted." Id. at 248, 106 S.Ct. at 2510 (citing 10A C. Wright, A. Miller & M. Kane, Federal Practice and Procedure § 2725 at 93-95 (1983)).

Moreover, summary judgment is not appropriate if the dispute about a material fact is "genuine", that is, "if the evidence is such that a reasonable jury could return a verdict for the non-moving party." Liberty Lobby, 477 U.S. at 248, 106 S.Ct. at 2510. In Liberty Lobby, the Supreme Court stated that the genuine issue standard for summary judgment mirrors the standard for a directed verdict under Federal Rule of Civil Procedure 50(a). As such, "the inquiry under each standard is the same: whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Liberty Lobby, 477 U.S. at 251-52, 106 S.Ct. at 2511-12.

Suits for patent infringement or the defense of anticipation often give rise to complex fact issues which render those issues inappropriate for summary judgment. The Federal Circuit, however, has upheld on occasion the grant of summary judgment in favor of accused patent infringers where there were no genuine issues of material fact and either the District Court had properly construed the claims or a finding of infringement would have been impossible. See, e.g., George v. Honda Motor Co., Ltd., 802 F.2d 432, 434 (Fed.Cir.1986); Porter v. Farmers Supply Service, Inc., 790 F.2d 882, 884 (Fed.Cir.1986); Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 654 (Fed.Cir.1984). Thus, the Federal Circuit has advised "where no issue of material fact is present ... courts should not hesitate to avoid an unnecessary trial by proceeding under Fed.R.Civ.P. 56 without regard to the particular type of suit involved." Chore-Time Equipment v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed. Cir.1983).

III. NABISCO'S MOTION ON THE INVALIDITY OF CLAIM 35 UNDER 35 U.S.C. § 102(b)

In order to prove anticipation of a patent claim under 35 U.S.C. § 102, a party must demonstrate by clear and convincing evidence, inter alia, identity of invention. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed.Cir.1983); Phillips Petroleum Co. v. U.S. Steel Corp., 673 F.Supp. 1278, 1287 (D.Del.1987). Identity of invention is a question of fact. Kalman, 713 F.2d at 771 (citing Coupe v. Royer, 155 U.S. 565, 578-79, 15 S.Ct. 199, 204-05, 39 L.Ed. 263 (1895)); see Tyler Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689 (Fed.Cir.1985); Lindemann Maschinenfabrik v. Am. Hoist and Derrick, 730 F.2d 1452, 1458 (Fed.Cir.1984); Phillips Petroleum, 673 F.Supp. at 1287. As the Federal Circuit has noted:

One who seeks such a finding must show that each element of the claim in issue is found, either expressly described or under principles of inherency, in a single prior art reference, or that the claimed invention was previously known or embodied in a single prior art device or practice.

Kalman, 713 F.2d at 771, quoted in Phillips Petroleum, 673 F.Supp. at 1287; see Great Northern Corp. v. Davis Core & Pad Co., Inc., 782 F.2d 159, 165 (Fed.Cir. 1986); Tyler Refrigeration, 777 F.2d at 689; American Hosp. Supply Corp. v. Travenol Lab., 745 F.2d 1, 6 (Fed.Cir.1984). The prior art need not, however, state the elements of the claim in identical language. See, e.g., Akzo N.V. v. U.S. Intern. Trade Com'n, 808 F.2d 1471, 1479 (Fed.Cir.1986) (noting Application of Brown, 329 F.2d 1006, 1011 (C.C.P.A.1964)).

To determine whether claim 35 is anticipated by the Railroad Cookie recipe under Section 102(b), the Court must undertake a two step analysis. The first step, "of course, is construction of the claims to determine their meaning in light of the specification and prosecution history." Kalman, 713 F.2d at 771. The second step requires the Court to compare the properly construed claims with the subject...