Pin/Nip, Inc. v. Platte Chemical Co.

• Decision Date: 04 September 2002
• Docket Number: No. 02-1056.,02-1056.
• Parties: PIN/NIP, INC., Plaintiff-Appellant, v. PLATTE CHEMICAL COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

304 F.3d 1235

PIN/NIP, INC., Plaintiff-Appellant, v. PLATTE CHEMICAL COMPANY, Defendant-Appellee.

No. 02-1056.

United States Court of Appeals, Federal Circuit.

DECIDED: September 4, 2002.

COPYRIGHT MATERIAL OMITTED

Edgar R. Cataxinos, Traskbritt, P.C., of Salt Lake City, UT, argued for plaintiff-appellant. With him on the brief were William S. Britt, H. Dickson Burton, and Devin R. Jensen.

Elizabeth R. Jones, The Beatty Law Firm, P.C., of Denver, CO, argued for defendant-appellee. Of counsel on the brief was Steven B. Andersen, Holland & Hart, L.L.C., of Boise, ID.

Before MAYER, Chief Judge, LOURIE and LINN, Circuit Judges.

LOURIE, Circuit Judge.

PIN/NIP, Inc. appeals from the decision of the United States District Court for the District of Idaho granting summary judgment to Platte Chemical Company that claim 1 of Platte's U.S. Patent 5,622,912 is not invalid under 35 U.S.C. § 102, PIN/NIP, Inc. v. Platte Chem. Co., No. 97-0307, slip op. at 7 (D.Idaho Feb. 3, 1999) ("Summary Judgment"). PIN/NIP also appeals from the court's denial of its motion for judgment as a matter of law, seeking to overturn a jury verdict that claim 1 is not invalid under 35 U.S.C. § 103, that PIN/NIP had infringed claims 1 and 33 of the `912 patent, and that claim 33 satisfied the written description requirement of 35 U.S.C. § 112, ¶ 1, PIN/NIP, Inc. v. Platte Chem. Co., No. 97-0307, slip op. at 1 (D.Idaho Mar. 31, 2000) ("Judgment"), as modified by PIN/NIP, Inc. v. Platte Chem. Co., No. 97-0307, slip op. at 1 (D.Idaho Mar. 5, 2001) ("Amended Judgment"). For the reasons set forth below, we affirm-in-part, reverse-in-part, and vacate-in-part.

BACKGROUND

Platte is the assignee of the `912 patent, which is directed to a composition and methods for inhibiting sprout growth on tubers, such as potatoes. Sprouting can cause tubers to exhibit undesirable texture and sugar levels, resulting in a less desirable food product. `912 patent, col. 1, ll. 20-22, 30-33. One prior art substance that inhibits tuber sprout development is the synthetic chemical chlorpropham, also referred to as CIPC. Id. at ll. 35-52. The background section of the `912 patent specification acknowledges that CIPC can be applied to tubers in storage using a known thermal fogging technique, whereby CIPC is heated or mixed with hot steam to create an aerosol, which is then circulated about the tubers. Id. Because the toxicity of CIPC is a matter of concern, people have sought natural substances for use as a tuber sprout suppressant. Id. at ll. 53-65. Known natural substances with sprout suppressing properties include dimethylnaphthalene ("DMN") and diisopropylnaphthalene ("DIPN"). Id. at col. 2, ll. 4-12. These substances, however, do not exhibit a desirable level of long-term effectiveness. Id.

The invention of the `912 patent served to inhibit sprout development on tubers by utilizing a combination of CIPC and a substituted naphthalene. In this way, the inventors hoped to be able to utilize lower levels of CIPC, and thus minimize toxicity concerns, while achieving a long-term effectiveness that had not been possible with a substituted naphthalene alone. Id. at ll. 16-31. The patent specification describes experiments in which reduced amounts of CIPC along with either DMN or DIPN were applied via thermal fogging to stored potatoes, and their sprouts were then measured over time. Id. at col. 3, ll. 14-60. The experiments revealed that a combination of CIPC and either DMN or DIPN was significantly more effective in inhibiting sprout growth than one would have expected based on applications of the chemicals separately. Id. at ll. 9-10 ("[T]he effectiveness of the combination was quite unexpected."); see also id. at col. 5, ll. 5-42 (analyzing the quantitative data from the experiments).

The application which issued as the `912 patent was filed with three independent claims, including composition claim 1 and method claim 19, reading as follows:

1. A composition adapted for inhibiting sprout formation in tubers during storage, comprising:

CIPC (chlorpropham); and

a substituted naphthalene.

19. A method of inhibiting sprout formation in tubers during storage, comprising the steps of:

providing a composition comprising CIPC and a substituted naphthalene to form a sprout inhibiting composition;

applying an effective amount of the sprout inhibiting composition to the outer surface of the tubers to form treated potatoes [sic]; and

storing the treated tubers.

Id. at col. 6, ll. 5-8, 55-64 (emphases added). In a preliminary amendment, the applicants added another independent claim, claim 33, also directed to a method, which reads as follows:

33. A method of inhibiting sprout formation on tubers during storage, comprising the steps of:

applying CIPC to the tubers in an amount effective to form a residue thereon and inhibit sprout formation therefrom applying a substituted naphthalene to the tubers in an amount effective to form a residue thereon and to inhibit sprout formation therefrom; and

storing the tubers for a period of time, wherein the CIPC and substituted naphthalene residues are both present for at least a portion of the period of time the tubers are stored.

Id. at col. 8, ll. 1-14. Claim 33 was added after the inventors learned that subsequent to their filing date PIN/NIP had publicly disclosed a method for treatment of potatoes for the purpose of sprout suppression, by which both CIPC and DMN were applied separately in spaced, sequential applications days to months apart. It is that activity for which Platte later accused PIN/NIP of infringing the `912 patent.

The United States Patent and Trademark Office ("PTO") allowed all claims in the application in the first Office Action. The examiner assigned to the application reasoned that it would have been prima facie obvious to one skilled in the art to have combined two known substances — CIPC and substituted naphthalene—each of which was taught by the prior art to suppress tuber sprout growth; however, the examiner concluded that the applicants had overcome the prima facie case by demonstrating unexpected results of the combination "greater than would be expected from the inhibition of each active agent alone." Summary Judgment at 8 (quoting the patent examiner's reasons for allowance).

PIN/NIP brought suit against Platte seeking a declaratory judgment of invalidity and noninfringement of the `912 patent, as well as asserting claims of violations of the antitrust and unfair competition laws. Platte counterclaimed for patent infringement. After conducting a Markman hearing, the court construed the term "composition" to mean "two chemicals ... arranged ... even though the chemicals are never physically mixed," including the situation "created by the spaced, sequential application of two chemicals applied days or months apart." PIN/NIP, Inc. v. Platte Chem. Co., No. 97-0307, slip op. at 10 (D.Idaho Jan. 21, 1999) ("Markman Order"). Accordingly, the court understood claim 1 to cover "a spaced, sequential application of CIPC and a substituted naphthalene when these two chemicals work together to inhibit sprouting." Id. In doing so, the court purported to rely upon what it held to be the full breadth of the ordinary meaning of the term, such as when an artist arranges or "composes" a still life, id. at 9, and found nothing in the `912 patent to narrow that definition, id. at 12. The court construed claim 19, however, to require pre-mixing of CIPC and substituted naphthalene. Id. at 11-12. The court interpreted claim 19 to include a temporal limitation because that claim first recites that the composition is "provid[ed]" and then recites that the composition is applied to tubers. Finally, the court construed claim 33, which does not contain the word "composition," to place "no limitation on the amount of time between applications" of CIPC and a substituted naphthalene. Id. at 12.

After the court's Markman rulings, both parties filed summary judgment motions. PIN/NIP sought summary judgment that it had not infringed the `912 patent and that the patent was invalid on a variety of grounds. Summary Judgment at 1. Platte sought a summary judgment of infringement. Id. The court partially granted PIN/NIP's motion concerning infringement, concluding that PIN/NIP had not infringed claim 19 as a matter of law, but that genuine issues of material fact existed as to the infringement of claims 1 and 33. As for validity, the court denied all of PIN/NIP's motions and furthermore sua sponte granted Platte summary judgment that the `912 patent was not anticipated by a 1979 Ph.D. thesis of James Beveridge, in which potatoes accidentally treated with CIPC were subsequently treated with DMN to measure the effect of DMN on sprout growth. Id. at 3-4. The court determined that genuine issues of material fact existed as to PIN/NIP's other asserted grounds of invalidity, including its argument that claim 33 failed to satisfy the written description requirement. Id. at 10-11.

The district court then bifurcated the case into two trials: the first to decide liability, and the second to determine damages. PIN/NIP, Inc. v. Platte Chem. Co., No. 97-0307, slip op. at 1 (D.Idaho Feb. 3, 1999) (Bifurcation Order). The parties agreed to that plan, with the first trial to be by a jury and the second by the judge. See id. In the first trial, Platte introduced evidence that three of PIN/NIP's "applicators" (PIN/NIP's customers who purchased CIPC and DMN from PIN/NIP and applied them to stored potatoes pursuant to PIN/NIP's instructions) had infringed claims 1 and 33. The jury returned a verdict that an unspecified "one of PIN/NIP's applicators" had infringed claims 1 and 33 and that PIN/NIP had willfully induced that infringement. PIN/NIP, Inc. v. Platte Chem. Co., No. 97-0307, slip op. at 1-3 (D. Idaho June 22, 1999) ("Special Verdict Form"). The jury also made factual findings favorable to Platte on all of PIN/NIP's validity challenges,...