Cargill, Inc. v. Sears Petroleum & Transport Corp.
| Decision Date | 27 August 2004 |
| Docket Number | No. CIV.A. 503CV0530DEP.,CIV.A. 503CV0530DEP. |
| Parties | CARGILL, INCORPORATED, Plaintiff, v. SEARS PETROLEUM & TRANSPORT CORP., and Sears Ecological Applications Co., LLC, Defendants. |
| Court | U.S. District Court — Northern District of New York |
MacKenzie, Hughes Law Firm, Syracuse, NY (Nancy L. Pontius, of counsel), Fulbright, Jaworski Law Firm, New York City (Mark Mutterperl, of counsel), Fulbright, Jaworski Law Firm, Minneapolis, MN (Alan M. Anderson, Scott A. Marks, Christopher Young, Renee L. Jackson, of counsel), for plaintiffs.
Duane, Morris Law Firm, New York City (William R. Hansen, John Dellaportas, of counsel), Wall, Marjama & Bilinski, LLP, Syracuse, NY (Indranil Mukerji, of counsel), for defendants.
DECISION AND ORDER
This action has as its genesis a commercial dispute between plaintiff Cargill, Incorporated ("Cargill"), one of the world's largest privately-held companies with operations centered around the manufacture and sale of agricultural products, and defendant Sears Petroleum Transport Corporation ("Sears"), a family-run petroleum products company headquartered in upstate New York.1 At the heart of this multi-faceted controversy is United States Patent No. 6,299,793 (the "'793 patent") issued in October of 2001, and assigned to Sears, as well as the invention which that patent teaches. The claims associated with the '793 patent describe a low molecular weight carbohydrate and salt based composition developed to address problems associated with roadway icing, although the language of the claims contained within the patent does not specifically limit use of the patented product solely to direct application upon road surfaces.
Currently pending before the court is an application by the parties for construction of certain disputed terms within the '793 patent, as well as cross-motions for summary judgment addressing various issues presented in the case surrounding the patent claims and defenses asserted by the parties including, inter alia, infringement, patent unenforceability, patent invalidity, and willful infringement. Cargill also seeks summary dismissal of common law counterclaims asserted by Sears, stemming from defendants' contention that prior to issuance of the '793 patent Cargill misappropriated and used to its own commercial benefit the principles associated with the underlying invention.
Development of the invention forming the basis of the '793 patent was driven by a perceived need for an improved roadway de-icing agent lacking in certain undesirable characteristics linked to previously available commercial products. According to background information set forth in the patent, products used in the past by municipalities and others for preventing or removing ice and snow buildup on pavement surfaces were found to possess inherently undesirable traits, including the tendency to promote corrosivity and environmental contamination.
Prompted by a desire to develop de-icing agents which did not exhibit these deleterious features, the industry turned to alternative formulations including those utilizing agricultural waste materials and by-products as base constituents. Prior art cited in the '793 patent references products derived from a wet milling process of shelled corn, soaked in a hot solution concerning sulphurous acid, yielding steep water solubles used in the de-icing product; a composition which included an "admixture of waste concentrate of alcohol distilling"; and a composition "formed from a waste product of the process of removing sugar from sugar beet molasses, also known as desugared sugar beet molasses." Marks Invalidity Aff. Exh. 1, col. 1, Ins. 28-48.2
The problems associated with these earlier organic products using agricultural residues, including brewers condensed solubles ("BCS"), as a base element included extreme variations in composition, viscosity, film forming tendency, freezing temperature, and other functional aspects, resulting in potentially greatly varied performance from batch to batch.3 The presence of "highly undesirable or unnecessary ingredients", including high organic contents, phosphorous compounds and heavy metals, in such earlier products also led to additional problems such as "stratification in storage, biological degradation, odor, plugging of filters and spray nozzles and environmental difficulties[.]" '793 patent, col. 1, ln. 67; col. 2, ln. 24.
To address these undesirable qualities associated with earlier formulations, the co-inventors of the '793 patent — David Wood, a Sears employee, and Robert A. Hartley, a Canadian chemist — set out to meet "an immediate need for synthetic, chemically modified thickeners, and carefully purified materials which can be substituted for the currently used agricultural residues ... [to] improve performance and reduce metal corrosion, spalling of concrete, toxicity and [address] environmental concerns." '793 patent, col. 2, Ins. 8-13. Among the objects of the invention listed in the '793 patent is the desire to provide 1) "a deicing formulation which exhibits improved performance standards which overcomes [sic] the prior art problems described above"; 2) "a deicing formulation which utilizes a synergistic combination of a low molecular weight carbohydrate and an inorganic freezing point depressant"; 3) "for improved ice melting properties and ... less corrosion"; 4) "consistent physical and chemical properties, thereby assuring consistent quality and performance"; and 5) "an economical, highly effective deicing formulation." '793 patent, col. 2, Ins. 14-32.
Upon determining that the principal organic components of the prior art formulations consisted of carbohydrates, the '793 inventors set about testing to probe the efficacy of the use of carbohydrates to formulate a more consistent and effective de-icing agent. In one set of tests BCS was diluted and divided into several fractions, which were then added to a mixture of ethanol and methanol, mixed with magnesium chloride in varying proportions, and assayed to determine their effects upon freezing point depression. Testing, including that calculated to identify the active constituents of BCS, revealed to the inventors that low molecular weight carbohydrates had the greatest impact on freezing point depression when mixed with magnesium chloride.
The inventors next identified several potential sources of carbohydrates in the low molecular weight range of less than 1,000, including glucose/fructose (180), disaccharides (342), trisaccharides (504), tetrasaccharides (666), centasaccharides (828), and hexasaccharides (990). Potential commercial sources of such low molecular weight carbohydrates were listed by the inventors in the '793 patent to include Corn Syrup Solid DE 44, high maltose corn syrup, high fructose corn syrup, and glucose.
Inventors Wood and Hartley initiated the patent prosecution process by the filing of utility patent application no. 09/224,906, on January 4, 1999. See Hansen Aff. Exh. C. That application, which has been referred to by the parties as a parent non-provisional application, and has been abandoned by the inventors, claimed an invention using a combination of three key components to formulate a de-icing composition which did not exhibit the problems associated with the cited prior art. Those components were described to include a freezing point depressant, which could consist of "any suitable inorganic or organic material and mixtures thereof", which could include either a chloride and/or an organic substance such as, notably, sugars (hexoses, saccharides) and an array of other potentially suitable components; a film former, comprised of "any suitable water soluble or water resoluble material"; and water. Id. While the film former is described in that application as intended to immobilize the freezing point depressant to prevent runoff from the road surface to which it is applied, it is also described as "itself a freezing point depressant" with the resulting effect of "further improv[ing] the efficiency of ice melting and aid[ing] in the reduction of metal corrosion [.]" Id.
On January 7, 1998 inventors Hartley and Wood filed provisional application no. 60/070,636. Hansen Aff. Exh. B. That application disclosed the same concept of using the combination of a freezing point depressant, a film former, and water in a refined form to overcome the problems associated with then-existing de-icer formulations, as was the subject of the earlier parent non-provisional application. See id.
While Sears has not altogether abandoned its claim of priority dating back to the provisional parent application filed on January 4, 1999, it acknowledges experiencing the serendipity which ultimately led to the issuance of the '793 patent in December of 1998, when it received a report from Bodycote Ortech, Inc. ("Bodycote"), a Canadian materials testing laboratory engaged at the request of inventors Wood and Hartley to conduct testing regarding the characteristics of Ice Ban — an existing, commercially available de-icing product. That report disclosed a synergism between the magnesium chloride and the Ice Ban. In analyzing the Ice Ban product Bodycote isolated five primary constituents, and discovered that one of those five components, identified as "Fraction E", consisted predominantly of carbohydrates appearing to be low molecular weight saccharides, or sugars. On December 31, 1998 Sears received a supplemental report stating that "lower molecular weight [carbohydrates] appear[ed] to produce the greatest influence on the freezing point of the solution." Hansen Aff. Exh. T, at SP01024.
Wood and Hartley filed continuation-in-part ("...
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