General Foods Corp. v. Perk Foods Company, 64 C 1829.

• Decision Date: 13 February 1968
• Docket Number: No. 64 C 1829.,64 C 1829.
• Citation: 283 F. Supp. 100
• Parties: GENERAL FOODS CORP., Plaintiff, v. PERK FOODS COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Illinois

283 F. Supp. 100

GENERAL FOODS CORP., Plaintiff, v. PERK FOODS COMPANY, Defendant.

No. 64 C 1829.

United States District Court N. D. Illinois, E. D.

February 13, 1968.

COPYRIGHT MATERIAL OMITTED

Arthur Connolly, Connolly, Bove & Lodge, Wilmington, Del., Phillip Bowman, Miller, Gorham Wescott & Adams, Chicago, Ill., Michael J. Quillinan, White Plains, N. Y., for plaintiff.

Herman Gordon and Ernest Cheslow, Dressler, Goldsmith, Clement & Gordon, Chicago, Ill., for defendant.

MEMORANDUM OPINION

MAROVITZ, District Judge.

FINDINGS OF FACT

1. This action is for infringement of U. S. Letters Patent No. 3,119,691, which is entitled, "Novel Farinaceous Animal Food." It is resisted by a counterclaim alleging non-infringement and invalidity. The patent was issued to plaintiff, General Foods Corporation (hereinafter known as General Foods) on January 28, 1964, identifying Varnum D. Ludington, Robert E. Schara, and Raymond E. Mohlie, as patentees, who assigned the patent to plaintiff. The application for the patent was filed April 23, 1962.

2. Plaintiff, General Foods, is a Delaware corporation with its principal place of business in White Plains, New York. It is the owner of the patent in suit, and makes and sells various food products, including a rehydratable dry dog food called "Gravy Train," which it alleges is manufactured in accordance with the teachings and claims of the patent in suit.

3. Defendant, Perk Foods Company (hereinafter referred to as "Perk"), is an Illinois corporation with its principal place of business in Chicago, Illinois.

4. Defendant is alleged to infringe process claims 1, 4, and 6, and "product-by-process" claims 12 and 13 of the patent in suit, by reason of the manufacture and sale of its dog food product known as "Vets' Gravy Style."

5. The trial was extensive, commencing on May 22, 1967, and concluding on June 9, 1967. The transcript of the record comprises over 1,700 pages and there were over 150 exhibits introduced, many of them consisting of numerous pages. An important aspect of the evidence consisted of demonstrations during the trial observed by the Court, as well as physical exhibits of representative dog foods.

6. The testimony having been concerned with technical matters and in many instances conflicting, the following findings are a result of careful consideration of the most credible evidence, both testimonial and documentary, and an evaluation of the courtroom demonstrations and physical exhibits. The findings are in some measure predicated upon an observation of the witnesses and a consideration of their demeanor, competency, and credibility, and many of the findings contained herein are adopted from those submitted by the respective parties.

7. Any Finding of Fact entered herein which may be properly considered in whole or in part as a conclusion of law shall be so deemed and treated as if set forth under Conclusions of Law herein.

Background Reference

8. Prior to 1955, the major prepared dog foods were canned dog foods and dry cereal-like "meals," primarily of the small pellet type. The canned products, varieties of which were sold by defendant, had a meat-like texture and a moisture content of about 75%. They had a high degree of palatability but, after the can was opened, they had poor storage characteristics. The meal types extant at that time were characterized by a cereal-like texture, a moisture content of about 10%, and a small particle size. (Stip. 8-9)

9. Plaintiff was the largest seller of "meal" type dog food with its "Gaines Meal" product, which was a homogenized product in the form of small pellets about ¼ inch across. "Gaines Meal" was sometimes served by the dog owner with added water. In some cases, dog owners added other materials to "Gaines Meal," including table scraps and table gravy. When moistened, the meal product tended to become mushy or doughy, and stick to the feeding plate. Reports of consumers' addition of table gravy to "Gaines Meal" were transmitted to plaintiff's management prior to 1959. (Stip. 9-10)

10. By 1957, the Ralston-Purina Company had introduced a new type of nutritionally balanced dry dog food into the national market, under the name "Purina Dog Chow." Dog Chow differed from the earlier "meals" in that; (1) it had a larger particle size, (2) it was a light, expanded, porous particle, or "kib," and (3) the kibs had fat on their exterior surfaces. (Stip. 11-12; Mohlie dep., DX-121K, p. 212-13; Bloomquist dep., DX-121E, p. 134-35)

11. Purina Dog Chow was usually served to dogs with water added, and the directions on the package instructed users to add moisture before serving the product, specifying one cup of water to six cups of product. (DX-106B)

12. Although it was thought that moistening helped increase the palatability of the dry dog foods, the addition of large amounts of water to Dog Chow caused mushiness or stickiness, which generally was less palatable to dogs than the recipe specified on the package. (Mohlie Tr. 34, Kinslie Tr. 872)

13. Purina Dog Chow was immediately successful in the marketplace, and the Gaines Meal share of the dry dog food market dropped substantially. Dog Chow today is the top selling dry dog food, ahead of both Gaines Meal and "Gravy Train." (Stip. 11; DX-30)

14. In 1958, plaintiff instituted an extensive program to develop a dog food which would have competitive distinctions over the products then available, and particularly Purina Dog Chow. A "crash program" to develop such a product was begun in view of the success of Purina Dog Chow and the consequent decrease in Gaines Meals sales. (Stip. 14). At the outset of their research, General Foods' researchers reviewed their accumulated knowledge and experience on all factors which contributed to the appeal of a dog food. They thought they knew from their experience in this field that dogs preferred a larger particle size; that added fat increased palatability; and that the ability of a dog food to absorb large amounts of water enhanced its palatability, but that this factor was defeated by the tendency of water to convert the dog food to a mushy sticky mass. In an early kennel test, plaintiff found that dogs preferred a wetted product rather than a dry meal, noting that Dog Chow initially enjoyed increased palatability when wetted with three times as much water as Ralston recommended. (PX-4, Bates 5130). But excessive liquid or time in the bowl caused mushiness which allegedly detrimentally affected the taste and the alleged palatability advantage of increased water content. (Mohlie Tr. 14-16, 154; Kinslie Tr. 851-52, 977; DX-72; PX-4, Bates 5764; PX-35A, B & C; PX-43A, Engstrom dep. pp. 5-7, 98-102; DX-24, Bates 7149).

15. In addition, and alleged by defendant to be the sole objective of the program, plaintiff desired to develop a product with a "promotable" feature, namely the simulation of a "gravy-like" appearance when water is added. Plaintiff contends that it sought to produce a product which could form a gravy upon rapid reconstitution in water, and at the same time retain its particle integrity without becoming mushy. If such a product could be developed, plaintiff thought that it would combine the palatability advantages of large amounts of water with a crunchy kib. (DX-72, DX-74, DX-87).

Defendant contends that gravy does not impart a palatability advantage so far as dogs are concerned, but does have appeal to housewives who think their dogs enjoy a product with gravy. Hence, it is defendant's position that plaintiff sought to develop a product with a "gimmick" which would be promotable, and that the features now relied upon by plaintiff, namely, "palatability" and "retarded hydration," were not part of their objectives in developing the product.

16. After considerable experimentation, plaintiff developed two products more or less simultaneously, each of which was a porous expanded fat-coated dry dog food. One product was identified by the trademark "Rally," and the other was identified by the trademark "Gravy Train." Both products were similar in some respects to the earlier Purina Dog Chow product in being a porous expanded large sized particle product having farinaceous and proteinaceous ingredients. (Stip. 14, 16).

17. The "Gravy Train" product is alleged to have the structure to rapidly absorb substantial amounts of water which causes a softening of the kib exterior. A fat coating and gravy former or "thickener" are added to the surface of the kib during the manufacturing process. The combination of fat coating and thickening material allegedly holds the water close to the surface of the kib, forms a thick gravy over the entire product, and prevents the water from penetrating to the center of the kib. The plaintiff claims to produce a "unique" kib, representing an advancement over the prior art. The kib features a fat coating and gravy former which allegedly "retard hydration" to the interior of the kib, thereby enabling the kib to remain crunchy. The coating is capable of forming and designed to form a gravy upon the addition of water. Both features, the retained crunchy texture, and the gravy, are alleged to significantly enhance the palatability of the product over prior dog foods.

18. A test market was initiated in April of 1959 in Wichita, Kansas, and Indianapolis, Indiana, to determine the acceptability of plaintiff's products Gravy Train and Rally. After market testing of both products, Rally was shelved and plaintiff went into national production of its Gravy Train product. (Stip. 17-18)

19. On January 20, 1960, the patentees of the patent in suit filed a patent application Serial No. 3,516, which is the parent of the patent in suit. (Stip. 21)

20. On April 23, 1962, the patentees of the instant patent filed a second patent application, Serial No. 189,310, in the Patent Office, which was prosecuted as a continuation-in-part of the first application Serial No. 3,516. The parent application was...