Armour and Company v. Swift & Company
| Decision Date | 09 August 1972 |
| Docket Number | No. 71-1197.,71-1197. |
| Citation | 466 F.2d 767,175 USPQ 70 |
| Parties | ARMOUR AND COMPANY, Plaintiff-Appellant, v. SWIFT & COMPANY, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Edward L. Foote, Edward J. Wendrow, Robert J. Bernard, Frank T. Barber, Chicago, Ill, for plaintiff-appellant; Winston, Strawn, Smith & Patterson, Chicago, Ill., of counsel.
Edward A. Haight, Britton A. Davis, Edward T. McCabe, Rolf O. Stadheim, Haight, Hofeldt & Davis, Chicago, Ill., for defendant-appellee.
Before KILEY, STEVENS and SPRECHER*, Circuit Judges.
Hansen's application for a patent on a process for assembling pieces of turkey meat into a boneless roast was originally rejected as obvious in view of the prior work of Maas.1 Armour persuaded the Patent Examiner that Maas' disclosure related to red meat which had not passed through rigor mortis, and that Hansen's discovery that essentially the same process would work with post-rigor poultry meat was patentable. The primary issue here is whether the Examiner's second or his first, appraisal of the invention was correct.2
We think an artisan who was familiar with the Maas process, without really knowing why it worked, would nevertheless have tried to use it on poultry meat if he was seeking a comparable result; we also think it would have been obvious to an analyst who understood why the process worked that it would also be successful with poultry meat. The question is whether incorrect or misunderstood hypotheses in the art at the time of Hansen's discovery made it nonobvious. We do not have the benefit of the Examiner's judgment on this precise issue because Armour apparently persuaded him that an incorrect hypothesis was valid. The district court found that Armour then knew, or should have known, better. An understanding of how the issue arose requires a fairly complete statement of the facts.
In May and June of 1964, Armour introduced a new boneless turkey roast into selected test markets. The product had a natural texture, did not lose its flavor or moisture during cooking, and could be sliced easily without crumbling or coming apart. It was a marked improvement over earlier attempts to combine chunks of meat with string or with adhesives such as gelatin or wheat gluten. It received prompt and widespread consumer acceptance.
Equally promptly it was copied by Swift. In August of 1964 a Swift research team thawed out an Armour roast, tore it apart, and identified the process by which it had been put together. The basic process can be simply described.
When chunks of meat are agitated in a salt solution a tacky exudate forms on the surface of the chunks; when they are pressed together and cooked, adjacent pieces are cemented to one another almost as though they originally comprised one large piece. Results are affected by the temperature during agitation, the extent of agitation, the amount of salt in the solution, and the character of the meat; however, the key to the process is the use of protein within the meat itself as the agent which cements the pieces together. Swift had not found this key until it analyzed Armour's product in 1964.
Armour applied for the patent in suit3 on March 16, 1964; the patent issued on November 15, 1966. This infringement action followed. After a long trial the district court, 320 F.Supp. 433, held the patent invalid; the court found that Hansen's invention had been anticipated by the work of Maas at Oscar Mayer4, and by the work of Dr. Baker at Cornell University5, that the process would have been obvious to one of ordinary skill in the art at the time the alleged invention was made6, and that Armour had breached its obligation of candor to the Patent Office.7
Armour appeals, urging that the findings are clearly erroneous. It argues that Maas' work on poultry to the extent that it preceded Hansen's discovery had been either "concealed" or "abandoned" within the meaning of § 102(g)8, that Dr. Baker's work related to an emulsion composed, in part, of ground poultry meat, unlike the chunks bound together by Maas and Hansen; that Swift's failures demonstrated that Armour's success was anything but obvious; and that its disclosures to the Patent Office were accurate if appraised in a correct temporal context and its nondisclosures were inadvertent and insignificant.
We agree with Armour that it is imperative that prior art, as well as Patent Office proceedings, be analyzed without reliance on after-acquired knowledge. As so analyzed, however, we are satisfied that the district court correctly concluded that this patent is invalid. The defects in Armour's prosecution of the patent application overcome the normal presumption of validity. Moreover, Hansen's probable knowledge —which we treat as actual knowledge in view of every inventor's presumed familiarity with the totality of relevant prior art9—of work which Maas had done at Oscar Mayer before Hansen left that company and joined Armour in 1962 and which was the subject of a patent application by Maas adequately explains the contrast between Armour's success and Swift's failure.
We first analyze the state of the prior art as of September 24, 1962, when Hansen's conception was disclosed to Armour's Patent Department.10 We then contrast Armour's representations to the Patent Office on May 26, 1966, with what Armour actually knew, or as the district court found, should have known, on that date. It was Armour's filing on that date which persuaded the Examiner to reverse his original rejection of the Hansen application as obvious in view of the work of Maas.11
Several hours after an animal dies, its muscles pass through rigor mortis. The proteins actin and myosin, which are normally separate in living and pre-rigor tissue, combine to form actomyosin in post-rigor tissue. The binding agent in the tacky exudate which agitation brings to the surface of the meat chunks in the Hansen or Maas process is either myosin, actomyosin, a combination of both, or even possibly something else. Swift contends that it is actomyosin; Armour claims that it is myosin, or at least at the time of Hansen's invention, the "art" taught that it was.
Under Armour's theory of the case, successful binding was only possible if adequate amounts of myosin could be extracted by the agitation process. Under this theory, the fact that the amount of available myosin would decline drastically when meat passed through rigor mortis made it necessary to use pre-rigor meat in the Maas process. According to Armour, the teaching of Maas applied only to pre-rigor red meat. The Hansen discovery was that poultry—unlike red meat—could be successfully processed after rigor mortis had taken place because enough myosin survived rigor to achieve an adequate bind. Alternatively, the theory of the discovery was that perhaps, contrary to the teaching of the art, it was not myosin after all that effected the binding but something else.12 On either hypothesis, Hansen made the surprising discovery that the Maas process would work on post-rigor poultry.
Armour's alternative theories make it proper to summarize the state of the art at two levels. First, putting to one side an attempt to understand exactly why the process worked, we consider what an ordinary artisan, fully informed about what had worked in the past, might reasonably expect to work in the future. Second, we consider whether a student of protein theory would have considered the use of Hansen's process on post-rigor poultry meat an obvious extrapolation from Maas' work on red meat in the light of other disclosures prior to September 24, 1962.
Hansen worked in Oscar Mayer's Research Department from 1957 until April of 1962. During that period Maas was in charge of Oscar Mayer's pilot plant. Hansen, who worked in the laboratory, had access to the pilot plant, but visited it only occasionally. In October of 1958 he prepared a confidential research report on the use of pre-rigor meat as a water stabilizing agent in sausage.13 The report discussed the effect of rigor mortis on the two main proteins of muscle, myosin and actin, the salt solubility of the proteins, the extractability of the proteins, and the increase in viscosity associated with the formation of actomyosin. About two years later he published an article on the emulsion formation in finely comminuted sausage14 in which he pointed out that the salt soluble proteins, myosin and actomyosin, appear to form a stabilizing membrane which add fat and water binding qualities to sausage emulsions.
In 1959 Maas first applied for a patent on a process for mechanically working pieces or chunks of meat to form a tacky exudate which could be used to cement abutting meat surfaces together. That application was abandoned and replaced by a continuation in-part which ultimately issued as the Maas patent on February 5, 1963. The specifications in that patent described how the process worked on various kinds of cured meat and fresh meat. The term "meat" was not expressly defined, the specifications merely stating that the "invention is generally applicable or useful in connection with various types of meat or sources of meat, e. g., pork, beef, veal, mutton, lamb, venison, etc."15 One example in the specifications described the procedure for making a product resembling a fresh pork chop.16 Maas testified unequivocally that he used post-rigor beef in the experiments described in the specifications.17
The patent does not mention poultry meat. However, in December of 1960 and January of 1961 Maas did successfully use his process to make boneless turkey roasts. Apparently Oscar Mayer, a company engaged almost exclusively in the manufacture and sale of red meat products, never marketed this product.18
On one occasion Hansen ordered some "mock pork chops" from the Oscar Mayer pilot plant.19 What Hansen did with this...
To continue reading
Request your trial
-
Hercules Inc. v. Exxon Corp.
...to disclose scientific data regarding prior art inventions that were cited and discussed before the Patent Office. Armour & Co. v. Swift & Co., 466 F.2d 767 (7th Cir. 1972); United States v. Masonite Corporation, 316 U.S. 265, 62 S.Ct. 1070, 86 L.Ed. 1461 (1942), Mercoid Corp. v. Mid-Contin......
-
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., CIvil Action No. 02-11280-RWZ.
...to compare nucleotide sequences or to track what figures are shared between divisional applications. See also Armour & Co. v. Swift & Co., 466 F.2d 767, 779 (7th Cir.1972) ("[Wile think that it is unfair to a busy Examiner . . . to assume that he retains details of every pending file in his......
-
KangaROOS USA, Inc. v. Caldor, Inc.
...claim that the utility applications were entitled to the benefit of the filing date of the design application. In Armour & Co. v. Swift & Co., 466 F.2d 767 (7th Cir.1972), the court rejected the patentee's argument that the information which he withheld from the PTO was already known to the......
-
Parker v. Motorola, Inc.
...to the Patent Office in support of the application, the bases for the statutory presumption disappear. See Armour and Company v. Swift & Co., 7 Cir. 1972, 466 F.2d 767; National Filters, Inc. v. Research Products Corp., 5 Cir. 1967, 384 F.2d 516, 520; Lodge & Shipley Co. v. Holstein and Kap......