Msm Investments Co., LLC v. Carolwood Corp.
| Decision Date | 30 September 1999 |
| Docket Number | No. 98-20238 EAI.,98-20238 EAI. |
| Citation | 70 F.Supp.2d 1044 |
| Parties | MSM INVESTMENTS COMPANY, LLC, Plaintiff, v. CAROLWOOD CORPORATION, G. Rex Bailey, Stephen J. Locke, Trimedica International, Inc., Natural Balance, Inc., dba Pep Products, Inc., Nurgetics, Inc., dba Bio Synergy Neutriceuticals, Vidot Enterprises, Inc., Defendants. |
| Court | U.S. District Court — Northern District of California |
Bruce S. Osterman, Law Office of Bruce S. Osterman, San Francisco, CA, William A. Birdwell, Allen Field, JaneAnne Peterson, Birdwell & Janke, Portland, OR, for plaintiff.
Don H. Marmaduke, Jon P. Stride, David S. Aman, Tonkon Torp LLP, Portland, OR, James J. Elacqua, Brobeck Phleger & Harrison LLP, Palo Alto, CA, for defendant.
Plaintiff MSM Investments Co., LLC. sued Defendants (collectively "Carolwood") for infringing U.S.Patent No. 5,071,878 ("the '878 patent"). In response, Defendants raised several affirmative defenses, including patent invalidity. By the instant motion, Defendants move for summary judgment that claims 1-8 of the '878 patent are invalid over an alleged public use under 35 U.S.C. § 102(b).
Having considered the written submissions of the parties and the oral arguments of counsel, the Court GRANTS the motion for summary judgment.1 Based on the evidence presented, the Court finds that no genuine issue of material fact exists and that claims 1-8 of the '878 patent are invalid, as a matter of law, under 35 U.S.C. § 102(b). The Court's analysis is set forth below.
U.S.Patent No. 5,071,878 issued on December 10, 1991, from an application filed on February 6, 1991. According to its title, the '878 patent relates to the use of methylsulfonylmethane ("MSM") to enhance the diet of an animal. The '878 patent names Robert J. Herschler as the sole inventor. Mr. Herschler assigned all rights to the '878 patent to MSM Investments in 1996. See Aman Aff., Exh. 16 (copy of assignment).
The '878 patent issued with a total of eight claims, two of which are independent (claims 1 and 5). The independent claims read as follows:2
1. A method of feeding [ ] an animal which comprises providing to the animal for ingestion a beneficial amount of methylsulfonylmethane which is in addition to any amount present as a naturally occurring constituent in the foodstuff ingested by the animal.
5. A method of increasing the amount of metabolizable sulfur ingested by an animal which comprises providing to the animal for ingestion thereby a beneficial amount of methylsulfonylmethane which is exogenous to and which is in addition to any amount thereof which is present as a naturally occurring ingredient of the foodstuff sources thereof ingested by the animal.
Claims 2, 3, and 4 depend from claim 1, and claims 6, 7, and 8 depend from claim 5. As can be seen, by the above claim language, these claims generally relate to methods involving the oral ingestion of MSM. For purposes of the instant motion, the claims are construed in accordance with the parties' agreed construction or, where the parties disputed the meaning of certain claim terms, by this Court's Order Regarding Claim Construction of U.S.Patent No. 5,071,878 dated July 23, 1999 ("Claim Construction Order"). To the extent resolution of any issues raised by this motion requires this Court to further construe the claims, the Court sets forth the further claim construction and supporting analysis herein.
The prosecution history offers insight into the '878 patent claims. In an Office Action dated May 14, 1991, the Patent Examiner assigned to the '878 patent application made three rejections. First, the Examiner rejected claims 1-4 as indefinite under 35 U.S.C. § 112, ¶ 2. Second, the Examiner rejected claims 1-4 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 5-11 of U.S.Patent No. 4,616,039 ("the '039 patent"). The Examiner explained that "the determination of the optimum proportioning of ingredient is considered to be well within the skill of the art." Office Action, at 2:13-15. And third, the Examiner rejected claims 5-8 as unpatentable over claims 1-4 of the '039 patent, applying the same reasoning as in the second rejection. In an Amendment filed June 11, 1991, Mr. Herschler overcame these rejections by amending the preamble of claim I and filing a terminal disclaimer.
The '878 patent claims priority to a chain of nine earlier-filed applications. The chain of applications and their relationships are summarized in the following table:
Serial No. (Patent No.) Filing Date (Issue Date) Relationship to Parent
06/071,068 (4,296,130) Aug. 6, 1979 (Oct. 20, 1981) no parent
06/277,592 (4,477,469) Jun. 26, 1981 (Oct. 16, 1984) divisional of 06/071,068
06/418,110 (4,514,421) Sep. 14, 1982 (Apr. 30, 1985) continuation-in-part of 06/277,592)
06/584,354 (4,568,547) Feb. 28, 1984 (Feb. 4, 1986) continuation-in-part of 06/418,110
and 06/277,592
06/601,771 (4,559,329) Apr. 17, 1984 (Dec. 17, 1985) continuation-in-part of 06/418,110
and 06/277,592
06/727,989 (4,616,039) Apr. 29, 1985 (Oct. 7, 1986) continuation-in-part of 06/418,110
06/584,354, 06/601,771
06/878,948 (4,863,748) Jun. 26, 1986 (Sep. 5, 1989) divisional of 06/727,989 and continuation-in-parts
of 06/418,110
06/584,354, 06/601,771, 06/727,989
07/385,117 (4,973,605) Jul. 26, 1989 (Nov. 27, 1990) divisional of 06/878,948
07/564,946 Aug. 9, 1990 divisional of 07/385,117
07/654,856 (5,071,878) Feb. 6, 1991 (Dec. 10, 1991) continuation-in-part of 07/564,946
The parties dispute the effective filing date of the '878 patent. Defendant Carolwood contends that the effective filing date of the '878 patent is September 14, 1982 (the filing date of the '421 patent). Motion, at 6:22-23. MSM Investments argues that the effective filing date is August 6, 1979, based on the '130 patent. Opposition, at 15:9-19.
Whether the '878 patent is entitled to an effective filing date based on the '130 patent depends on the adequacy of the '130 patent disclosure to support the '878 patent claims. While the '130 patent is generally directed to the topical use of MSM for cosmetic purposes, the '130 patent contains three passages relevant to the '878 patent claims. The first reference appears in the section of the '130 patent entitled "Summary of the Invention" and reads as follows:
Depending on its intended use, a preparation can contain MSM in solution or in a dispersion. It may take the form of a cream, lotion, gel or paste for topical administration or a liquid, solid or vapor for administration by other routes such as injection, inhalation, oral injestion [sic] and the like.
'130 patent, at 2:41-47. The second and third references appear in the section entitled "Description of Preferred Embodiments." The second reference reads as follows:
[MSM] can be included in syrups, tablets or capsules which are ingested to preserve the pliancy of intestinal and other tissue.
'130 patent, at 4:10-12. And, the third reference reads as follows:
MSM Administered Orally
To determine whether living animal subject would react adversely to orally administered compositions of MSM, a 40 weight percent solution of MSM in distilled water was prepared. This solution was administered orally to laboratory rats at such a rate that each rat received 20 grams of MSM per kilogram of body weight per day.
After six weeks of administration, none of the animals had died or displayed unusual symptoms or behavior.
'130 patent, at 11:50-61. Neither party points to any other passages of the '130 patent as supporting the '878 patent claims.
Carolwood relies on activities occurring at the Jacob Clinic in 1981 as invalidating the '878 patent claims. According to Carolwood, these activities constitute a "public use" under 35 U.S.C. § 102(b).
Much of the evidence offered by Carolwood remains uncontroverted and comes in the form of deposition and trial testimony from several witnesses and patient records. According to the evidence (which MSM Investments concedes), Dr. Jacob administered MSM to human patients for oral ingestion at an outpatient clinic at the Oregon Health Sciences University (referred to herein as the "Jacob Clinic") before September 14, 1981, as a pain reliever. See Opposition, at 11:24-25, 13:4-5. The evidence shows that Dr. Jacob administered the MSM during a period beginning as early as February, 1981 through September 14, 1981. See Amman Aff., Exh. 5; Exh. 7, p. 8; Exh. 9, pp. 3 and 5; Exh. 10. Dr. Herschler initially supplied Dr. Jacob with MSM, but did not control Dr. Jacob's use of MSM at the clinic. Amman Aff., Exh. 7, p. 10. At least in some cases, the amount administered was up to one-half teaspoon, twice daily, in powered form mixed in water or orange juice and was administered for months at a time. See Motion, at 4:4-12 and cited exhibits; Reply, at 3:19-21 and cited exhibits. MSM Investments does not challenge Carolwood's contention that one-half teaspoon of powdered MSM is roughly 2 grams. Motion, at 4:6-7. The evidence shows that the patients were informed that they were being treated with MSM. See Amman Aff., Exh. 7, pp. 11-12, Exh. 10.
Additional findings surrounding the activities at the Jacob Clinic were made by the Vermont district court in Foodscience. These findings are summarized below in the section entitled "Related Patent Litigations." In its opposition, MSM...
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