Bird Provision Co. v. Owens Country Sausage, Inc.

• Decision Date: 24 February 1978
• Docket Number: No. 75-3412,75-3412
• Citation: 568 F.2d 369,197 USPQ 134
• Parties: BIRD PROVISION CO., Plaintiff-Appellant Cross-Appellee, v. OWENS COUNTRY SAUSAGE, INC., Defendant-Appellee Cross-Appellant. BIRD PROVISION CO., Plaintiff-Appellant Cross-Appellee, v. Clifford B. OWENS et al., Defendants-Appellees Cross-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 369

568 F.2d 369

197 U.S.P.Q. 134

BIRD PROVISION CO., Plaintiff-Appellant Cross-Appellee, v. OWENS COUNTRY SAUSAGE, INC., Defendant-Appellee Cross-Appellant.

BIRD PROVISION CO., Plaintiff-Appellant Cross-Appellee, v. Clifford B. OWENS et al., Defendants-Appellees Cross-Appellants.

No. 75-3412.

United States Court of Appeals, Fifth Circuit.

Feb. 24, 1978.

Harvey B. Jacobson, Jr., Washington, D. C., Allen Butler, Dallas, Tex., for plaintiff-appellant cross-appellee.

Carlisle Blalock, D. Carl Richards, Dallas, Tex., for defendants-appellees cross-appellants.

Appeals from the United States District Court for the Northern District of Texas.

Before THORNBERRY, AINSWORTH and RONEY, Circuit Judges.

RONEY, Circuit Judge:

Plaintiff Bird Provision Company claims that Owens Country Sausage, Inc. and two of its officers infringed on Bird Provision's patented process for making fresh pork sausage. Defendants admit infringement, but contend that the Bird Provision patent is invalid on several grounds. The district court declared the patent invalid on the grounds of prior public use and obviousness, and Bird Provision appealed. On the basis of the district court's findings and decision, Bird Provision Co. v. Owens Country Sausage, Inc., 379 F.Supp. 744 (N.D.Tex.1974), we affirm.

I. Background

The ancient art of making fresh pork sausage has changed but little over the centuries. Basically, the meat is stripped from the slaughtered animal, ground and seasoned, and packaged uncooked. Under what the parties term the "conventional" method of sausage processing, the carcass is chilled overnight at 35-40o and processed while cool into air-permeable sausage casings such as cloth bags or polyethylene films. Sausage "hot-processed" according to the Bird Provision patent, however, is packaged into air-impermeable containers before the meat temperature falls below 80o fahrenheit. ¹ Bird Provision recognizes four requirements as the key elements of its patented process: the meat must be processed while it retains a temperature of at least 80 and preferably 90 degrees; packaging must be completed within 31/2 hours, and preferably within 1 hour, from the time of slaughter; the meat must be "warm and fluent" when packaged; and it must be packaged into an air-impermeable material, such as the well-known saran film. Bird Provision claims that processing fresh pork sausage according to the terms of its patent doubles the refrigerated shelf life of the packaged product and indefinitely prolongs shelf life when frozen.

Fresh pork sausage is unusually susceptible to rancidity spoilage, discoloration, and bacterial spoilage. Rancidity spoilage and discoloration are caused by oxygen in prolonged contact with the meat. Fresh pork sausage, no matter how it is processed, necessarily contains some oxygen, either dissolved in the meat itself or entrapped in the air pockets created during the grinding and mixing stages. Therefore spoilage will not be prevented by simply protecting the meat from external oxygen by air-impermeable packaging. If rancidity and discoloration are to be eliminated, the oxygen dissolved and entrapped within the meat must somehow be eliminated.

According to Bird Provision, the internal oxygen can be eliminated by packaging the meat while it is "warm and fluent," which requires processing within 31/2 hours and while the meat retains no less than 80o of its original 102-104o temperature. Air pockets tend not to form when the meat is processed in a warm and fluent state. More importantly, the warm and fluent meat contains enzymes (live tissues) that metabolize (consume) residual internal oxygen.

Bacterial spoilage results from the growth of microorganisms in the meat. Since freezing stops all bacterial growth, bacterial spoilage is not a problem in frozen storage, only at temperatures above freezing. Fresh pork sausage can be held at high temperatures for a period of 3 to 4 hours before appreciable bacterial growth begins. Therefore, the Bird Provision process is able to control bacterial spoilage by controlling the initial level of psychophillic bacteria (those which grow at temperatures below 50o ) and by packaging the sausage within 31/2 hours.

Defendants do not dispute the validity of Bird Provision's claims, nor do they deny that the processing method currently in use at Owens Country Sausage, Inc. infringes the Bird Provision patent. They argue, however, that the Bird Provision patent is invalid on four grounds: (1) prior public use and sales, (2) obviousness, (3) vagueness and indefiniteness, and (4) fraud on the United States Patent Office in obtaining the patent. The district court held the patent invalid for prior public use and obviousness and did not consider defendants' alternative allegations of vagueness and fraud. Because we affirm the district court's findings as to prior public use and obviousness, it is unnecessary to reach defendants' contention, raised on cross-appeal, that the district court erred in failing to hold the patent invalid for vagueness and fraud on the Patent Office.

II. Patent Validity

The ultimate question of patent validity is one of law. That conclusion of law, however, must be based on the results of several basic factual inquiries. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1960); Metal Arts Co. v. Fuller Co., 389 F.2d 319 (5th Cir. 1968). Findings of fact in patent cases, no less than in other areas of law, are tested on appeal under the strictures of the "clearly erroneous" review standard of Fed.R.Civ.P. 52(a). Hughes Tool Co. v. Varel Mfg. Co., 336 F.2d 61 (5th Cir. 1964). Indeed, because patent cases so frequently involve conflicts in the evidence, especially in expert testimony, they seem particularly suited for the review limitations imposed by Rule 52(a). See American Seating Co. v. Southeastern Metals Co., 412 F.2d 756 (5th Cir. 1969).

Federal statutes delineate three specific requirements for patentability: utility, 35 U.S.C.A. § 101; novelty, 35 U.S.C.A. § 102; and nonobviousness, 35 U.S.C.A. § 103. The absence of any one of these requirements negatives the existence of any rights in the inventor and is a complete bar to compensation. See Hobbs v. United States, 376 F.2d 488, 493 (5th Cir. 1967). Owens Country Sausage does not assail the utility of Bird Provision's patented process, but does contend that the process is obvious and lacks novelty.

A. Novelty

Novelty is negated and the patent invalid if "the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent . . . ." 35 U.S.C.A. § 102(b). Application for the Bird Provision patent was made on August 10, 1960. The patent is therefore invalid if a single public use of the process or sale of its product took place prior to the "critical date," August 10, 1959.

The bar to patent validity thrown up by § 102(b) is basically a reflection of the public policy that an inventor should not be permitted to extend the effective duration of his patent monopoly through covert commercial exploitation of his invention. Kardulas v. Florida Machine Products Co., 438 F.2d 1118 (5th Cir. 1971). Thus, a public use may be established either by showing a nonsecret, nonexperimental use of the process or by showing that the inventor himself used the process primarily for trade and profit prior to the critical date, regardless of whether his use was secret. In re Yarn Processing Patent Validity Litigation, 498 F.2d 271 (5th Cir.), cert. denied sub nom. Sauquoit Fibers Co. v. Leesona Corp., 419 U.S. 1057, 95 S.Ct. 640, 42 L.Ed.2d 654 (1974).

It is clear that the infringer who assails the validity of a patent bears the burden of proof. White v. Mar-Bel, Inc., 509 F.2d 287, 291 (5th Cir. 1975). The weight of that burden of proof, however, is not so clear. See Stamicarbon, N.V. v. Escambia Chemical Corp., 430 F.2d 920, 924 (5th Cir.) ("(T)he authorities are in a morass of conflict."), cert. denied, 400 U.S. 944, 91 S.Ct. 245, 27 L.Ed.2d 248 (1970); Hobbs v. United States Atomic Energy Comm'n, 451 F.2d 849, 856 (5th Cir. 1971) ("(T)his Court has employed varying statements of the necessary quantum of proof."). This case does not turn on a resolution of this inconsistency, for it is clear that these defendants shouldered the most onerous of standards. The trial court was convinced "beyond a reasonable doubt" that the Bird Provision process was anticipated by four separate instances of prior public use.

First, the trial court found that the Bird Provision process has been used on American farms for generations. Generally, in late fall a farm family would slaughter a hog for winter sausage. The carcass would be boned, the trimmings ground and seasoned, and patties formed and put into crocks or cloth bags. The crocks were then sealed by a layer of grease, which, when hardened, rendered the container air-impermeable. The cloth bags were coated with paraffin to maintain freshness. The process, according to two witnesses, was generally completed within 31/2 hours after slaughter and while the temperature of the meat was above 80o . Bird Provision's own expert witness testified that assuming the air-impermeability of the lard sealant, this farm process would fall within the teachings of the Bird Provision patent if completed within 31/2 hours and while the meat was still above 80o .

The second public use found by the district court took place in Lee's Summit, Missouri, at the R. B. Rice Sausage Co. during the mid-1950's. The president of that concern, Harold Rice, testified that in 1955 and 1956 the Rice Co. process from slaughter to package took from 1 to 3 hours and that the product was packaged into saran at 75o to 85o . The deposition testimony of two employees of the Kartridge Pak Machine Co. is corroborative. One of these men had witnessed "warm and soupy" sausage being packaged into saran by a Kartridg-Pak machine in early 1956. The...