Ecolab, Inc. v. Fmc Corp.

• Decision Date: 09 June 2009
• Docket Number: No. 2008-1228.,No. 2008-1252.,2008-1228.,2008-1252.
• Citation: 569 F.3d 1335
• Parties: ECOLAB, INC., Plaintiff-Appellant, v. FMC CORPORATION, Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

569 F.3d 1335

ECOLAB, INC., Plaintiff-Appellant, v. FMC CORPORATION, Defendant-Cross Appellant.

No. 2008-1228.

No. 2008-1252.

United States Court of Appeals, Federal Circuit.

June 9, 2009.

Thomas L. Hamlin, Robins, Kaplan, Miller & Ciresi L.L.P., of Minneapolis, MN, argued for plaintiff-appellant. With him on the brief were Stephen P. Safranski and Heather M. McElroy.

Rudolf E. Hutz, Connolly Bove Lodge & Hutz LLP, of Wilmington, DE, argued for defendant-cross appellant. With him on the brief was Francis DiGiovanni. Of

counsel was Steven A. Nash. Of counsel on the brief was Alan M. Anderson, Briggs and Morgan, P.A., of Minneapolis, MN.

Before RADER, GAJARSA, and DYK, Circuit Judges.

GAJARSA, Circuit Judge.

In this patent infringement case, Ecolab, Inc. appeals and FMC Corporation cross appeals from the final judgment of the United States District Court for the District of Minnesota, which was based on the jury's verdict that: Ecolab infringed specified claims of FMC's U.S. Patent No. 5,632,676 ("the '676 patent"); FMC willfully infringed specified claims of two patents asserted by Ecolab — U.S. Patent Nos. 6,010,729 ("the '729 patent") and 6,113,963 ("the '963 patent"); and specified claims of each patent asserted by Ecolab are invalid as anticipated or obvious. We find no error regarding the majority of issues presented on appeal. However, we hold the district court erred by denying FMC's motions for judgment as a matter of law ("JMOL") that claim 7 of the 729 patent and claims 25-28 of the '963 patent are invalid, by failing to conduct the proper analysis when considering the permanent injunction motions, and by failing to award interest. Thus, we affirm-in-part, reverse-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.

Background

I. The Technology and Patents

Ecolab and FMC sell chemical products used by beef and poultry processors to reduce pathogens, such as E. coli and salmonella, on uncooked beef and poultry. Ecolab sells Inspexx, with Inspexx 100 marketed for use on poultry and Inspexx 200 marketed for use on beef. FMC sells FMC-323, which is used on either beef or poultry. The Inspexx and FMC-323 products contain the antimicrobial compound peracetic acid ("PAA"), which the food processing and food service industries have long used as a surface sanitizer. Additionally, the Inspexx products contain peroctanoic acid and octanoic acid, whereas FMC-323 does not.

Both Ecolab and FMC have obtained patents directed to the use of PAA as a sanitizer in beef and poultry processing. In April 1993, Ecolab obtained U.S. Patent No. 5,200,189 ("the Oakes patent"), which was not asserted in this case but is relevant prior art. That patent claims a peroxyacid antimicrobial composition containing peracetic, peroctanoic, and octanoic acids. According to the Oakes patent, the combination of the three acids "produces a synergistic effect, producing a much more potent biocide than can be obtained by using these components separately." Oakes Patent col.2 ll. 51-53. The patent states that the claimed sanitizing solution "can be used effectively to clean or sanitize facilities and equipment used in the food processing, food service and health care industries." Id. at col.2 ll.56-59. In October 1993, FMC submitted a patent application that disclosed a method for sanitizing meat, specifically processed fowl, by applying PAA directly to the meat. That patent application issued as the '676 patent in 1997. The patent described the invention as "an extremely effective method for sanitizing a fowl carcass without unduly affecting the skin or the flesh of the bird carcass." '676 Patent col.2 ll.60-62. In 1998 and 1999, Ecolab filed three patent applications directed to methods for applying PAA alone or in combination with other peracids directly to meat products, including beef or poultry, to reduce microbial populations on the meat surface. Those applications issued in 2000 as the '729 patent, the '963 patent, and U.S. Patent No. 6,103,286 ("the '286 patent").

II. The Proceedings before the District Court

Ecolab filed an action against FMC for infringement of the '729, '286, and '963 patents. FMC counterclaimed that Ecolab infringed FMC's '676 patent, and each party asserted its opponent's patent claims are invalid. The case was tried before a jury, and the jury found that: (1) claims 17, 19, 20, and 22 of Ecolab's '729 patent are invalid as anticipated or obvious; (2) claims 1-4 of Ecolab's '286 patent are invalid as obvious; (3) claims 7, 17, 19, 20, and 22 of Ecolab's '963 patent are invalid as anticipated or obvious; (4) the '676 patent claims asserted by FMC are not invalid; (5) FMC willfully infringed claim 7 of the '729 patent and claims 25, 27, and 28 of the '963 patent; (6) Ecolab infringed claims 1, 5, 6, and 7 of FMC's '676 patent; and (7) neither party induced infringement of any claims. The jury awarded reasonable royalty damages to both parties, and the district court entered judgment on the jury's verdict.

Both Ecolab and FMC filed post-trial motions. Ecolab filed motions for JMOL, a permanent injunction, enhanced damages, attorney fees, prejudgment and post-judgment interest, an accounting, and amendment of the judgment. FMC filed various JMOL and new trial motions and a motion to alter the judgment that included a request for a permanent injunction, prejudgment and post-judgment interest, and an accounting. The district court denied all post-trial motions in summary form and without explanation. Order, Ecolab, Inc. v. FMC Corp., No. 05-CV-831 (D.Minn. Feb. 22, 2008). Ecolab and FMC timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion

Ecolab appeals and FMC cross appeals the district court's denial of their respective JMOL motions. Ecolab further asserts the district court erred by denying its motions for a permanent injunction, enhanced damages, attorney fees, interest, and an accounting. FMC further asserts the district court erred by misconstruing a claim term, by imposing an improper damages award, and by denying its requests for a permanent injunction, prejudgment interest, and an accounting.

I. The JMOL Motions

Both Ecolab and FMC assert that the district court erred by denying their respective JMOL motions. Specifically, Ecolab contends the district court should have granted JMOL that Ecolab did not infringe the '676 patent claims and that FMC induced infringement of Ecolab's patent claims. FMC contends the district court should have granted JMOL that claim 7 of the '729 patent and claims 25-28 of the '963 patent are invalid as anticipated or obvious, that Ecolab induced infringement of FMC's patent claims, and that FMC did not willfully infringe Ecolab's patent claims.

A. Standard of Review

This court applies the procedural law of the relevant regional circuit when reviewing the district court's denial of a motion for JMOL. MicroStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1348 (Fed.Cir.2005). Under Eighth Circuit law "[w]e review de novo the denial of a motion for judgment as a matter of law, using the same standards as the district court." Concord Boat Corp. v. Brunswick Corp., 207 F.3d 1039, 1049 (8th Cir.2000). We "must assume as proven all facts that the nonmoving party's evidence tended to show, give [the nonmovant] the benefit of all reasonable inferences, and assume that all conflicts in the evidence were resolved in [the nonmovant's] favor." Hathaway v. Runyon, 132 F.3d 1214, 1220 (8th Cir. 1997). We must consider all the evidence, without weighing witness credibility, and if the only reasonable conclusion is not the one reached by the jury, JMOL is appropriate and should have been granted. See Concord Boat Corp., 207 F.3d at 1050.

B. Ecolab's Motion for JMOL of Noninfringement

The jury found Ecolab infringed claims 1, 5, 6, and 7 of FMC's '676 patent, all of which include the following:

A method for sanitizing fowl that has been killed, plucked and eviscerated, comprising contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid ... and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl.

'676 Patent col. 10 ll. 15-48. Ecolab argues it is entitled to JMOL of noninfringement for two reasons. First, Ecolab argues that when the '676 patent claims are properly construed in light of FMC's prosecution history disclaimer, Inspexx does not infringe because the patent claims cover only solutions containing PAA as the sole antimicrobial agent. Second, Ecolab argues it does not infringe because Inspexx does not "sanitize" meat products under the patent's definition of that term. We find neither argument persuasive and hold that the district court did not err when it denied Ecolab's motion for JMOL of noninfringement.

1. Prosecution History Disclaimer

Ecolab first argues that, during prosecution, FMC disclaimed compositions containing multiple antimicrobial agents. Thus, because Inspexx contains three antimicrobial agents, Ecolab argues that Inspexx does not infringe the '676 patent as a matter of law. Whether prosecution history disclaimer applies is a legal question this court reviews de novo. Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1456 (Fed.Cir. 1998) (en banc). As this court has noted, "since, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover, he is by implication surrendering such protection." Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed.Cir.1997). However, we will find that the applicant disclaimed protection during prosecution only if the allegedly disclaiming statements constitute "a clear and unmistakable surrender of subject matter." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1251 (Fed.Cir.2000). Even if an isolated statement appears to disclaim...