Bird Provision Company v. Owens Country Sausage, Inc.

• Decision Date: 06 August 1974
• Docket Number: No. CA 3-2149,CA 3-2480.,CA 3-2149
• Parties: BIRD PROVISION COMPANY v. OWENS COUNTRY SAUSAGE, INC. BIRD PROVISION COMPANY v. Clifford B. OWENS and Jerry P. Owens.
• Court: U.S. District Court — Northern District of Texas

379 F. Supp. 744

BIRD PROVISION COMPANY v. OWENS COUNTRY SAUSAGE, INC.

BIRD PROVISION COMPANY v. Clifford B. OWENS and Jerry P. Owens.

Nos. CA 3-2149, CA 3-2480.

United States District Court, N. D. Texas, Dallas Division.

August 6, 1974.

Allen Butler, Clark, West, Keller, Sanders & Butler, Dallas, Tex., and Harvey B. Jacobson, Jr., O'Brien & Jacobson, Washington, D. C., for plaintiff.

Carlisle Blalock, Tobolowsky, Schlinger & Blalock, Merrill L. Hartman, Hewett, Johnson, Swanson & Barbee, Richards, Harris & Hubbard, Dallas, Tex., Mason, Fenwick & Lawrence, Washington, D. C., for defendants.

MEMORANDUM OPINION

WILLIAM M. TAYLOR, Jr., Chief Judge.

What in the ancient art of making fresh pork sausage is truly new — patentably new?

That deceptively simple question is at the heart of this hard-fought lawsuit charging the infringement of U.S. Patent 3,124,462, owned by the plaintiff Bird Provision Company. The patent covers a method of processing and packaging sausage in an air impermeable container (made of Saran film) within three and one-half hours after the hog is slaughtered and while the meat temperature remains above 80° F.¹

The defendants, Owens Country Sausage, Inc. (in CA 3-2149-C), and two of its officers, Clifford B. Owens and Jerry P. Owens (in CA 3-2480-C), admit that they infringed the patent, but challenge its validity on several grounds.

Having tried the consolidated cases and having reviewed all the evidence, pleadings, and arguments, the Court agrees with the defendants that the patent is invalid and unenforceable. Bird will be denied the injunctive relief and money damages it sought, and Owens will be granted the declaratory judgment prayed for in its counterclaim.

To understand the nature of this dispute, the reader must have at least an elementary knowledge of the history of sausage-making and the process used in making fresh (as opposed to cured) pork sausage. Homer's Odyssey, written about the ninth century B.C. contains the first authenticated reference to sausage, according to one account.² In addition, the ancient Romans are believed to have mixed fresh ground pork with spices to make sausage.³

The first step in sausage making is, obviously, slaughtering (or "bleeding") the hog. Next the carcass is dressed; this is the removal of head and entrails. After that, the meat is boned; in other words, the meat is sliced away from the bones. The meat then is ground, and seasoning is mixed in. Finally, the uncooked sausage is stuffed, or packaged. Packaged sausage is refrigerated to prevent spoilage by bacterial action.

In what Bird describes as the "conventional" method of sausage making in the United States, the hog carcass is chilled overnight in a 35-40° cooler and all further processing is done while the meat is cold. In the patented process in this suit, by contrast, the meat is not chilled but rather is processed immediately after slaughter, while still warm and "fluent". This means it is closer to a liquid than a solid; it will not, for example, hold its shape if formed into patties.

For years, sausage destined for retail sale was stuffed into cloth bags. Later, cellophane and polyethylene were used as the container material. Finally, Bird began using tubes of Saran, a pliable film technically described as vinylidene chloride copolymer. While cloth, cellophane and polyethylene all allow varying quantities of oxygen to penetrate them, Saran is highly resistant to the passage of oxygen and other gases.

Bird claims that its patented combination of hot processing and Saran packaging dramatically increases the length of time pork sausage will keep on grocery store shelves and in consumers' homes without spoiling, discoloring or losing its flavor. In fact, Bird says sausage made according to its patent will stay fresh six weeks in a fresh meat case, and at least two years when frozen. This extended shelf life has obvious commercial advantages over earlier methods of processing pork sausage, which is among the most perishable of meat products.

At trial and in briefs, Owens set forth several reasons that it believes the patent is invalid: (1) fraud on the U.S. Patent Office in Bird's obtaining the patent, (2) prior public uses and sales, (3) obviousness in view of prior art references, and (4) vagueness and indefiniteness. The Court is of the opinion that the patented process was in prior public use and was obvious, making a discussion of the other allegations unnecessary. The reasons for these conclusions now will be discussed in some detail.

I. PRIOR PUBLIC USE AND SALES

Owens⁴ has asserted the defense of prior use, as permitted by Congress in 35 U.S.C. § 102(b). The statute provides, in part, that a patent shall not issue 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 in the United States.

The application for the patent in suit was filed on August 10, 1960. Thus the patent was improperly issued if the Bird process was in public use in the United States before August 10, 1959. Evidence at the trial showed that the Bird process was indeed in prior public use.

First, and probably of less importance, on-the-farm hot sausage processing dates back to the early days of the United States. Owens' production manager, R. A. Loftus, testified that when he was a boy growing up on a farm he had seen his father make sausage by slaughtering a hog in the wintertime, skinning and boning it without refrigeration, grinding, mixing, and finally stuffing the sausage into either a cloth bag or a glass jar that was sealed by pouring grease over the meat and allowing it to harden. In fact, in preparation for the trial of this case, Mr. Loftus duplicated the farm method at the Owens plant, ensuring that the processing was completed within three and one-half hours of slaughter while the meat temperature remained above 80°. After about nine months of storage, he cooked and ate some of the test sausage. He and another witness who ate some of it, Robert Langford, Owens' manager of engineering maintenance, described the flavor as good, although not outstanding. Mr. Langford also testified about observing straight-through sausage processing when he was growing up on a Texas farm. In fact, I can remember that I saw on-the-farm sausage making in my own youth. Farmers, obviously, did not package their sausage in Saran, but Owens' expert witness testified that the glass-and-lard combination formed an air impermeable barrier equivalent to Saran packaging. Alternatively, a paraffin-coated cloth bag would form an air impermeable container, according to the witness, Dr. Robert Saffel. Bird's expert, Dr. John Silliker, in response to a hypothetical question on cross-examination, testified that assuming the lard did in fact have an air impermeability equivalent to Saran, if pork sausage were poured into a stone crock within three and one-half hours from the time of slaughter while the temperature remained above 80°, and lard were poured on top of the sausage, this farm process would fall within the teachings of the Bird patent.

Secondly, Owens maintained at trial that the Bird process was in prior use at the R. B. Rice Sausage Co. in Lee's Summit, Missouri, prior to August 10, 1959. Witnesses, depositions and documentary evidence were presented to support Owens' contention. For example, Harold B. Rice, president of the Rice Company, told in his deposition of packaging hot processed sausage in Saran as early as 1952 or 1953 and selling some of it to retailers. Although Mr. Rice did not consider time and temperature of the meat critical, it appears from his testimony that at least some of the Saran-packaged Rice sausage was processed within the time and temperature limits of the Bird patent and was sold at retail. Corroboration of this conclusion comes from other testimony, such as that of the deponents Harold Orlich and Donald Zeller. Both men were employed by Kartridg Pak Machine Co., a manufacturer of meat packaging machinery, and both visited the Rice plant in connection with Mr. Rice's use of Kartridg Pak equipment to package sausage in Saran. Mr. Orlich saw "warm and soupy" sausage packaged in Saran on a Kartridg Pak machine he had installed.

Although, as noted above, Mr. Rice testified that some Saran-packaged sausage was sold at retail, he characterized the Saran packaging as experimental, or for test purposes. Bird seizes upon this as evidence that the sales fall outside the provisions of the prior use statute cited above. As a general proposition, it is true that "if the purpose of the prior use is mainly experimental, it will not negative novelty." 1 Deller's Walker on Patents, § 59, p. 259. This rule, however, applies to experiments by the inventor, as was the situation in the cases cited by Bird, Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1878) and Hunt Industries, Inc. v. Fibra Boats, Inc., 299 F.Supp. 1145 (S.D.Fla.1969). However, "the use or sale by third parties of what constitutes the claimed invention is not an experimental use within the exception." Monolith Portland Midwest Co. v. Kaiser Aluminum & Chemical Corp., 267 F. Supp. 726, 785 (S.D.Cal.1966), modified on other grounds and aff'd., 407 F.2d 288 (9th Cir. 1969). See also Bourne v. Jones, 114 F.Supp. 413 (S.D.Fla.1951), aff'd, 207 F.2d 173 (5th Cir. 1953), cert. denied 346 U.S. 897, 74 S.Ct. 220, 98 L. Ed. 398 (1953); Magnetics, Inc. v. Arnold Engineering Co., 438 F.2d 72, 74 (7th Cir. 1971)

Thus, even if Mr. Rice's use of Saran packaging of sausage processed within the time and temperature limits of the Bird patent is characterized as merely experimental, it nevertheless invalidates the patent under 35 U.S.C. § 102(b).

Thirdly, it is Owens' contention that another public use occurred at the Keith Brothers Sausage Co. in Salem, Virginia. A document and the testimony of a witness and a deponent are relied on to...