Mars, Inc. v. H.J. Heinz Co., L.P.

• Decision Date: 29 July 2004
• Docket Number: No. 03-1617.,03-1617.
• Citation: 377 F.3d 1369
• Parties: MARS, INC., Plaintiff-Appellant, v. H.J. HEINZ COMPANY, L.P., Heinz Management Company, and Del Monte Corporation, Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

377 F.3d 1369

MARS, INC., Plaintiff-Appellant, v. H.J. HEINZ COMPANY, L.P., Heinz Management Company, and Del Monte Corporation, Defendants-Appellees.

No. 03-1617.

United States Court of Appeals, Federal Circuit.

DECIDED: July 29, 2004.

Rehearing and Rehearing En Banc Denied August 30, 2004.

COPYRIGHT MATERIAL OMITTED

Appeal from the United States District Court for the Central District of California, R. Gary Klausner, J.

Raphael V. Lupo, McDermott, Will & Emery, of Washington, DC, argued for plaintiff-appellant. With him on the brief were Mark G. Davis, Jennifer C. Chen and Bureden J. Warren. Of counsel on the brief were Linda L. Addison, Marc L. Delflache, C. Erik Hawes and John E. Schneider, Fulbright & Jaworski L.L.P., of Houston, TX. Also on the brief was Robert R. Schroeder, Mars, Incorporated, of McLean, VA.

E. Edward Bruce, Covington & Burling, of Washington, DC, argued for defendants-appellees. With him on the brief was Joseph E. Topmiller.

Before SCHALL, DYK and PROST, Circuit Judges.

DYK, Circuit Judge.

Appellant Mars, Inc. ("Mars") appeals the final judgment of the United States District Court for the Central District of California granting appellees H.J. Heinz Company, L.P., Heinz Management Company, and Del Monte Corporation (collectively "Heinz") summary judgment of non-infringement of U.S. Patent No. 6,312,746 (the "'746 patent"). Mars, Inc. v. H.J. Heinz Co., L.P., No. CV-01-10961-RGK (C.D.Cal. Jul. 28, 2003). Because the district court applied the incorrect claim construction, we vacate and remand.

BACKGROUND

The '746 patent is directed to a dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell. The soft inner component increases palatability, and the claimed product's low total moisture content lengthens shelf-life. Thirty-three claims of the '746 patent, including independent claims 1, 17, 25, 78 and 89, have been asserted in this case. Claim 1 is representative:

1. A dual texture pet or animal food product comprising:

a soft inner component of a dual texture pet or animal food product containing a mixture of lipid and solid ingredients, the first component having a water activity, aw, less than about 0.65 and a total moisture content less than about 15 wt %;

a cereal based shell component of the dual texture pet or animal food product containing at least one ingredient comprising a carbohydrate, fat, protein or combination thereof, the shell component having a total moisture content less than about 20 wt %;

wherein the shell component completely surrounds the soft inner component and is formed by the co-extrusion of the soft inner component within the shell component to form one dual component pet or animal food product.

'746 patent, col. 18, ll.11-26 (emphasis added). The central issue in this case is the meaning of the claim language "containing a mixture of lipid and solid ingredients," which appears in all five of the asserted independent claims.¹

On December 19, 2001, Mars filed this suit against Heinz, alleging that certain lines of pet food marketed by Heinz infringed the '746 patent. At a Markman hearing held on February 4, 2003, Mars argued that the "containing a mixture of lipid and solid ingredients" limitation means that the claimed "soft inner component" contains, but is not limited solely to, lipid and solid ingredients. Specifically, Mars urged that the terms "containing" and "mixture" are open-ended terms that do not exclude the presence of unlisted ingredients. The district court disagreed. It held that the limitation was close-ended and must include only lipid or solid ingredients. Kal Kan Foods, Inc. v. H.J. Heinz Co., L.P., No. CV01-10961 RGK, slip op. at 4 (C.D.Cal. Feb. 5, 2003). The court based its construction on statements in the specification indicating that the soft inner component should "not exceed 100 wt%" of lipids and solids and that "the most preferred embodiment comprises about '60 wt% solids and 40 wt% lipids.'" Id. at 5. The court further noted that other limitations in the asserted claims use the term "containing at least." Id. at 4. According to the district court, Mars's "failure to use a qualifier, such as `at least,' when referring to the soft inner component, yet including such a qualifier [for other limitations], indicates that [Mars] meant for the inner component to be exclusive of ingredients other than lipids and solids." Id. The district court subsequently denied Mars's motion for reconsideration of its claim construction order. Mars, Inc. v. H.J. Heinz Co., No. CV 01-10961-RGK (C.D.Cal. May 19, 2003).

Following issuance of the claim construction order, both parties moved for summary judgment on the issue of infringement. The meaning of the term "ingredients" was not argued at the Markman hearing, and the claim construction order did not construe this term. Mars argued that "ingredients" should be construed to refer to either the starting materials or the end components of the finished product. Mars contended that the "containing a mixture of lipid and solid ingredients" limitation was met because the end components of the accused finished product contained only lipids and solids. Heinz, on the other hand, argued that the term "ingredients" referred only to the starting materials used to make the product. Because it was undisputed that water-based syrups, which were neither lipids nor solids, were used to make the inner component of the accused products, Heinz urged that the "containing a mixture of lipid and solid ingredients" limitation was not met as a matter of law. Heinz also argued that even under Mars's construction of ingredients, summary judgment of non-infringement was proper because there remained non-lipid, non-solid ingredients in the inner component of its finished product. Finally, Heinz argued that the "all limitations rule" and prosecution history estoppel barred infringement under the doctrine of equivalents.

The district court granted Heinz's motion for summary judgment of non-infringement. Mars, Inc. v. H.J. Heinz Co., No. CV 01-10961-RGK (C.D.Cal. July 21, 2003)("Mars"). The court reiterated its close-ended construction of the term "containing." Id., slip op. at 4. The court then held that there was no literal infringement because "ingredients" referred only to the starting materials used to make the product, and Mars did not dispute that certain non-lipid, non-solid syrups were used to make the accused products. Id., slip op. at 4-5. Further, there was no infringement under the doctrine of equivalents because "such application of the doctrine of equivalents would vitiate the `containing a mixture of lipid and solid ingredients' limitation, and thereby run afoul of the all-limitations rule." Id. at 6. The district court did not reach Heinz's prosecution history estoppel argument with respect to the doctrine of equivalents. Id. at 6 n. 2.

Final judgment was entered on July 28, 2003, and Mars timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

The issue on appeal is whether Heinz was entitled to summary judgment of non-infringement under a correct construction of the claim language.

Determination of patent infringement requires a two-step analysis: (1) the scope of the claims must be construed; and (2) the allegedly infringing device must be compared to the construed claims. PSC Computer Prods., Inc. v. Foxconn Int'l, Inc., 355 F.3d 1353, 1357 (Fed.Cir.2004). We review the district court's claim construction and the grant of summary judgment based thereon without deference. Id.

I. Claim Construction

We begin our claim construction analysis with the words of the claim itself. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). Unless there is an express intent to impart a novel meaning to the claim terms, the words of the claim are presumed to take on "the ordinary and customary meanings attributed to them by those of ordinary skill in the art." Int'l. Rectifier Corp. v. IXYS Corp., 361 F.3d 1363, 1369 (Fed.Cir.2004); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.Cir.2003). Dictionaries are one source for determining the ordinary meaning of a claim term. Texas Digital Sys. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002). Nevertheless, "[t]he specification must be examined in every case to determine which of the possible dictionary meanings is consistent with the use of the claim term in the context of the claims and the written description...." Int'l. Rectifier, 361 F.3d at 1369.

A

The appellant first contends that the district court erred in holding that the term "ingredients" in the phrase "a mixture of solid and lipid ingredients" refers only to starting materials. We agree that the claims are not so limited.

The parties direct us to Webster's Third New International Dictionary (2002) ("Webster's"), which provides that an "ingredient" is "something that enters into a compound or is a component part of any combination or mixture." Id. at 1162. So too, the Oxford English Dictionary 2d ed., vol. 7 (1989) ("OED"), defines "ingredient" as "[s]omething that enters into the formation of a compound or mixture; a component part, constituent, element." Id. at 963. These definitions indicate that the ordinary meaning of "ingredients" can refer to either starting materials (e.g., as in a recipe) or to the components of a mixture after they have been combined.

Here, the term "ingredients" must be read in context of the claims' reference to "a mixture of lipid and solid ingredients." The parties agree that "mixture" means "a portion of matter consisting of two or more components in varying proportions that retain their own properties." (J.A. at 1224); see also Websters at 1449 (defining "mixture" as "a product of mixing: COMBINATION," or more specifically as "a combination of several different kinds of some article of consumption"). The claims at issue are for "a...