General Foods Corp. v. Studiengesellschaft Kohle mbH, 91-1418

• Citation: 972 F.2d 1272,23 USPQ2d 1839
• Decision Date: 11 August 1992
• Docket Number: No. 91-1418,91-1418
• Parties: GENERAL FOODS CORPORATION, Plaintiff-Appellee, v. STUDIENGESELLSCHAFT KOHLE mbH, Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1272

972 F.2d 1272

23 U.S.P.Q.2d 1839

GENERAL FOODS CORPORATION, Plaintiff-Appellee, v. STUDIENGESELLSCHAFT KOHLE mbH, Defendant-Appellant.

No. 91-1418.

United States Court of Appeals Federal Circuit.

Aug. 11, 1992.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Oct. 2, 1992.

Paul H. Heller, Kenyon & Kenyon, New York City, argued for plaintiff-appellee. With him on the brief were Richard L. DeLucia, James Galbraith and Richard S. Gresalfi.

Arnold Sprung, Sprung, Horn, Kramer & Woods, Tarrytown, N.Y., argued for defendant-appellant. With him on the brief was Nathaniel D. Kramer.

Before RICH, Circuit Judge, SKELTON, Senior Circuit Judge, and CLEVENGER, Circuit Judge.

RICH, Circuit Judge.

Studiengesellschaft Kohle mbH (SGK), as trustee for real-party-in-interest Max Planck Institute for Coal Research, appeals from the June 12, 1991 judgment of the United States District Court for the Southern District of New York, Civil Action No. 88-8343, declaring invalid claims 1 and 4 of SGK's U.S. Patent No. 4,260,639 ('639 patent), titled "Process for the Decaffeination of Coffee," on the sole ground of "double patenting," in view of SGK's earlier-issued U.S. Patent No. 3,806,619 ('619 patent), titled "Process for Recovering Caffeine." Because there is no double patenting, we reverse.

BACKGROUND

This declaratory judgment suit is between a licensor and licensee over patents relating to decaffeinated coffee. Plaintiff, General Foods Corporation (GF), owns Maxwell House Coffee Company which manufactures decaffeinated coffee at its AMCO plant in Houston, Texas, for sale under brands such as Sanka, Maxim, Brim, Yuban, and Maxwell House. GF also owns Kaffee HAG, a processor and research company in Bremen, Germany, which is said to have been the first producer of decaffeinated coffee.

SGK developed in Europe inventions relating to decaffeination and owned five United States patents involved in this lawsuit. Learning about SGK's developments, GF entered into an exclusive license agreement with SGK effective February 1, 1978, which has now become a nonexclusive license, on which it paid royalties to SGK through 1990, since then paying further royalties under protest. The license agreement provided for advance payments totalling $1,800,000 during the first year. Royalties were to range from 1.75% of net decaffeinated coffee sales up to 40,000,000 GF brought this suit for a declaration of non-infringement, invalidity, and unenforceability as to all five patents. However, the District Court found that although all five SGK patents were licensed, SGK now asserts that only claims 1 and 4 of the '639 patent would be infringed by GF's operation at the AMCO plant and that the other four patents are no longer in suit. Although GF asserted numerous defenses against claims 1 and 4, including invalidity for "obviousness-type double patenting," non-infringement, obviousness under 35 U.S.C. § 103, non-enablement under 35 U.S.C. § 112, and unenforceability due to inequitable conduct before the Patent and Trademark Office (PTO), the District Court issued an Order of Trial on April 5, 1991, on GF's motion, to "bifurcate the issue of double patenting." The order further stated, "If the decision does not dispose of the action, trial will then immediately continue on the remaining issues."

pounds down to 1.25% of net sales over 120,000,000 pounds.

The District Court held a separate trial on the single issue of double patenting. A judgment was entered holding claims 1 and 4 of the '639 patent invalid, thus terminating GF's declaratory judgment suit seeking invalidity of the only patent it was alleged to be infringing and putting an end to its obligation to pay SGK royalties under its contract. 765 F.Supp. 121.

This appeal followed and, as above stated, there is only one issue for us to decide--is there double patenting. We shall first discuss the facts regarding the two patents involved and then the law of double patenting as it applies to those facts.

Patent Claims

Preliminarily, in order to better focus on the crucial aspects of the patents under discussion, we make the following elementary observations about patent claims. The patent document which grants the patentee a right to exclude others and hence bestows on the owner the power to license, consists of two primary parts: (1) a written description of the invention, which may and here does include drawings, called the "specification," enabling those skilled in the art to practice the invention, and (2) claims which define or delimit the scope of the legal protection which the government grant gives the patent owner, the patent "monopoly." As stated by Judge Lane, who served on both of our predecessor courts, in In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA1970), "A claim is a group of words defining only the boundary of the patent monopoly." (Emphasis ours.) The Supreme Court has likened patent claims to the description of real property in a deed "which sets the bounds to the grant which it contains. It is to the claims of every patent, therefore, that we must turn when we are seeking to determine what the invention is, the exclusive use of which is given to the inventor by the grant provided for in the statute,--'He can claim nothing beyond them.' " Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510, 37 S.Ct. 416, 418, 61 L.Ed. 871 (1917) (emphasis ours).

That being the essential nature of patent claims, it follows that each claim is an entity which must be considered as a whole. It cannot be said--though it often is, incorrectly, by the uninitiated--that a part of a claim is "claimed" subject matter. For example, a claim to a process comprising the step A followed by step B followed by step C defines, as a matter of law, only the A-B-C process and one cannot properly speak of any single step as being "claimed", for it is not; all that is claimed is the process consisting of the combination of all three steps. Such a claim, therefore, creates no patent right or monopoly in step A, no right to prevent others from using step A apart from the combination of steps A-B-C. Step A is not "patented."

Another way of stating the legal truism is that patent claims, being definitions which must be read as a whole, do not "claim" or cover or protect all that their words may disclose. Even though the claim to the A-B-C combination of steps contains a detailed description of step A, that does not give the patentee any patent These legal rules about construing claims are repeated here because the law of double patenting is concerned only with what patents claim. "Double patenting," therefore, involves an inquiry into what, if anything, has been claimed twice.

right in step A and it is legally incorrect to say that step A is "patented."

The Patent in Suit and its Claimed Invention

Coffee beans contain a small percentage of caffeine which must be removed to produce decaffeinated coffee. The inventor, Kurt Zosel, working in Germany for SGK, discovered that moist (i.e., containing water) "supercritical" carbon dioxide, that is, carbon dioxide above its critical temperature and critical pressure, was an excellent solvent for taking the caffeine out of coffee beans. That was the basic invention. The parties and the trial court have referred to the patent on this invention as "the decaffeination patent."

A U.S. application for patent on this invention was filed January 28, 1971, serial No. 110,428. This application was prosecuted to the point where all pending claims were allowed following the usual debate with the examiner over unobviousness in view of prior art references. The official Notice of Allowance was mailed by the PTO March 8, 1973. Payment of the base issue fee was due within three months, June 8, 1973.

Upon examining the 13 allowed claims prior to issue, Zosel and/or his attorneys realized that all claims were limited to raw coffee beans and it was concluded that the application disclosure would support broader claims not limited to raw coffee, but broad enough to include roasted coffee; i.e., claims simply calling for "coffee." It was decided, therefore, to file a continuation-in-part application (a CIP) with such broader claims. This was done within the time limit allowed by PTO rules and application Serial No. 364,190 was filed on May 25, 1973. Original application Serial No. 110,428, according to the usual practice, was allowed to go abandoned.

The try for broader claims did not succeed in a prosecution that was hard fought and went all the way to the PTO Board of Patent Appeals and Interferences (Board). Zosel and his assignee SGK ended up with a Board decision on July 12, 1979, that allowed claims to no more than had originally been allowed, claims to the new process as applied to raw coffee beans. The Board held the disclosure in Zosel's original application did not support claims naming "coffee" generally, wherefore he was entitled only to the filing date of the CIP, to which he had added supporting disclosure. Given that filing date, there was new prior art which barred claims not restricted to raw coffee. The Board said:

We affirm the rejection of claims 1-14 [the new broad coffee claims] under 35 USC 102(d) as anticipated by the British patent. Contrary to appellant's assertion, the decaffeination of coffee in general, i.e. from both its raw and roasted state, by the claimed expedient is not implicit in the disclosure of the parent application.

We are not concerned on this appeal with this aspect of the Board's decision. It simply concluded Zosel's effort to get broad "coffee" claims.

The more interesting aspect of the Board's decision relates to the double patenting issue now before us. During the CIP prosecution, the Examiner had made obviousness-type double patenting rejections based on the claims of Zosel's U.S. Patent No. 3,806,619, issued April 23, 1974, the same '619 patent relied on by the District Court in support...