Kemin Foods v. Pigmentos Vegetales Del Centro

• Decision Date: 09 May 2005
• Docket Number: No. 4:02CV40327.,4:02CV40327.
• Citation: 369 F.Supp.2d 1075
• Parties: KEMIN FOODS, L.C., the Catholic University of America, Plaintiffs, v. PIGMENTOS VEGETALES DEL CENTRO S.A. DE C.V., Defendant.
• Court: U.S. District Court — Southern District of Iowa

369 F.Supp.2d 1075

KEMIN FOODS, L.C., the Catholic University of America, Plaintiffs, v. PIGMENTOS VEGETALES DEL CENTRO S.A. DE C.V., Defendant.

No. 4:02CV40327.

United States District Court, S.D. Iowa, Central Division.

May 9, 2005.

COPYRIGHT MATERIAL OMITTED

Christine Lebron-Dykeman, Edmund J. Sease, Jeffrey D. Harty, John D. Goodhue, McKee, Voorhees & Sease, PLC, Edward M. Mansfield, Roger T. Stetson, Belin Lamson McCormick Zumbach Flynn, Des Moines, IA, John F. Lynch, Michelle Replogle, Scott W. Clark, Susan K. Knoll, Howery Simon Arnold, Houston, TX, for Plaintiffs.

G. Brian Pingel, Michael A. Dee, Camille Lynne Urban, Brown Winick Graves Gross Baskerville & Schoenebaum PLC, Des Moines, IA, for Defendant.

ORDER ON MOTION FOR CLARIFICATION; MOTION FOR PERMANENT INJUNCTION AS SUPPLEMENTED; AND MOTION FOR FEES

GRITZNER, District Judge.

Currently pending before the Court are Plaintiffs' Motion for Clarification (Clerk's No. 327), Plaintiffs' Motion for Permanent Injunction (Clerk's No. 316), Plaintiffs' Motion for an Order Requiring PIVEG to Provide Samples of Its Purified Lutein Products (Clerk's No. 339) (hereinafter, "Supplement Motion"), and Defendant's Motion for Fees and Costs (Clerk's No. 328). These motions arose following the jury verdict rendered on September 24, 2004, and the Court's recent Order on Post-Trial Motions filed February 8, 2005 ("Order").¹ A hearing on these motions, with the exception of Plaintiffs' Supplement Motion,² was held on April 1, 2005. The Court considers these motions fully submitted, to the extent discussed herein, and ready for ruling.

PROCEDURAL AND FACTUAL BACKGROUND

Plaintiffs Kemin Foods, L.C. ("Kemin") and the Catholic University of America filed this infringement action against Defendant Pigmentos Vegetales Del Centro S.A. de C.V. ("PIVEG") on July 9, 2002. Kemin alleged that PIVEG's production of purified lutein infringed Kemin's product protected by U.S. Patent No. 5,382,714 ("the '714 patent") and Kemin's process for producing purified lutein protected by U.S. Patent No. 5,648,564 ("the '564 patent"). As the case proceeded toward trial, the Court entered an order pursuant to 35 U.S.C. § 295 ("the § 295 Order"), wherein the Court determined that, given the lack of conclusive, reliable evidence of PIVEG's actual process for producing purified lutein and Kemin's inability to obtain such evidence through the discovery process due to PIVEG's business practices and foreign corporation status, the burden of proving noninfringement would fall on PIVEG. In essence, Section 295 establishes a presumption that PIVEG's purified lutein product is made by Kemin's patented process. This burden-switching applied solely to the '564 patent infringement claims. All other pre-trial dispositive motions were denied.

Thereafter, a jury trial was held September 13-23, 2004. At the conclusion of the trial, the jury rendered a verdict finding no infringement of the '714 patent, infringement of the '564 patent under the doctrine of equivalents, and no invalidity of either the '714 or '564 patents. In essence, the jury seemingly concluded that neither party carried its burden — Kemin on infringement of the '714 patent, and PIVEG on the validity issues and noninfringement of the '564 patent (at least under the doctrine of equivalents). The jury awarded damages to Kemin for infringement of the ' 564 patent, albeit a much smaller amount than requested by Kemin. Post-trial motions in regard to the verdict have previously been resolved.

ANALYSIS

Currently pending before the Court are Kemin's Motion for Clarification of Order on Post-Trial Motions, Kemin's Motion to Permanently Enjoin Defendant From Infringing Claims 1 and 2 of U.S. Patent No. 5,648,564, Kemin's Supplement Motion seeking an order requiring PIVEG to provide samples of its products, and PIVEG's Motion for Fees and Costs.

A. Motion for Clarification

Kemin requests clarification of one sentence in the Court's February 8, 2005, Order on Post-Trial Motions. At page 13 of that Order, the Court stated that "[a]lthough the [Poultry Science] article does not discuss the presence of toxic chemicals the Court finds the composition disclosed does meet each of the limitations claims in the '714 patent." Order, at 13. Kemin believes this statement implies that the Poultry Science article anticipates the '714 patent. See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed.Cir.2003) (recognizing that "a prior art reference which expressly or inherently contains each and every limitation of the claims subject matter anticipates and invalidates").

Kemin argues this is inconsistent with the Court's specific findings with respect to the validity of the '714 patent. The Court finds later in the Order that the Poultry Science article "is not `highly' material to the '714 patent," and that there was "insufficient evidence to prove anticipation under the clear and convincing standard." Order, at 23, 52. Ultimately, the Court held there was "sufficient evidence to support the jury's conclusion that the '714 patent was not anticipated." Order, at 52.

PIVEG initially counters by pointing out the excerpts quoted by Kemin as being inconsistent are analyzing separate elements of inequitable conduct and are not necessarily inconsistent. The Court's finding that the article was not "highly" material related to the Court's determination of inequitable conduct. See Baxter Int'l. Inc. v. McGaw, Inc., 149 F.3d 1321, 1327 (Fed.Cir.1998) (providing that in inequitable conduct analysis the court must first make a determination of materiality and intent and then weigh the respective levels of materiality and intent). The statement on page 13 that Kemin seeks to have clarified and/or modified is under the section entitled "Materiality", while the second excerpt is in the section entitled "Balancing of Materiality and Intent". According to PIVEG, this clearly indicates the Court's first statement constitutes its determination the article is indeed material because it discloses all of the elements while the second excerpt relates to the Court's assignment of weight of the materiality. In addition, the full excerpt on page 23 goes on to find the article is not enabled.

Furthermore, PIVEG notes there is a different standard of review in the Court's ruling on a renewed motion for judgment as a matter of law from that applicable in reaching factual findings as part of an inequitable conduct analysis. The Court was required to review the jury's advisory findings on the issue of inequitable conduct and then make its own findings on the existence and weight of the elements of inequitable conduct. See Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1578 (Fed.Cir.1984). Meanwhile, as related to its review of the jury's verdict on the anticipation issue, the standard of review on a renewed motion for judgment as a matter of law merely requires the Court to determine whether there was a complete absence of probative facts to support the jury's conclusion. See Eich v. Bd. of Regents for Cent. Mo. State Univ., 350 F.3d 752, 761 (8th Cir.2003) (quoting Hathaway v. Runyon, 132 F.3d 1214, 1220 (8th Cir.1997)). Therefore, PIVEG asserts the Court's determinations and statements are not necessarily inconsistent.

The Court finds its statement at page 13 of its Order on Post-Trial Motions is not inconsistent with later statements or conclusions in the Order. The Court found the article disclosed all limitations of the '714 patent as part of its analysis of materiality related to inequitable conduct. This statement could not accurately be used to argue the Court found the article necessarily or impliedly anticipates the '714 patent. Indeed, the Court also concluded the Poultry Science article was not enabled; therefore, it could not serve as an anticipating reference. See Elan Pharms., Inc. v. Mayo Found., for Med. Educ. & Research, 346 F.3d 1051, 1054 (Fed.Cir.2003) (finding that to serve as an anticipating reference, the reference must enable that which it is alleged to anticipate); Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed.Cir.2003) ("A claimed invention cannot be anticipated by a prior art reference if the alleged anticipatory disclosures cited as prior art are not enabled.").

Accordingly, the Court finds no inconsistency as claimed by Kemin, and thus no reason exists for clarification and/or modification of the Order. The Court ultimately concluded there was sufficient evidence to support the jury's verdict on the issue of anticipation, and stated so explicitly, and the Court regards nothing in the Order as inconsistent with that determination. Individual and discrete statements are not to be used to infer a finding or conclusion that the Order as a whole does not support, and the Order as a whole can support only one conclusion on the issue of anticipation, i.e., that sufficient evidence supports the jury finding that the Poultry Science article did not anticipate the '714 patent. As a result, the Court must deny Plaintiff's Motion for Clarification.

B. Motion for Permanent Injunction

Kemin requests the Court permanently enjoin PIVEG from infringing the '564 patent. The patent statute authorizes the Court to "grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable." 35 U.S.C. § 283. Injunctions are generally granted in patent cases following a finding of infringement. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281 (Fed.Cir.1988) (noting "injunctive relief against an adjudged infringer is usually granted ... [and] an injunction should issue once infringement has been established unless there is a sufficient reason for denying it") (citations omitted).

Injunctions protect the essence of patent property rights, i.e., the right to exclude others from using the patented invention without...