Ralston Purina Co. v. Far-Mar-Co, Inc.

Citation227 USPQ 177,772 F.2d 1570
Decision Date19 September 1985
Docket NumberFAR-MAR-C,INC,No. 84-1237,84-1237
PartiesRALSTON PURINA COMPANY, Appellee, v., Appellant. Appeal
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Warren N. Williams, Schmidt, Johnson, Hovey & Williams, of Kansas City, Mo., argued for appellant. With him on brief was John M. Collins.

Randall G. Litton, Price, Heneveld, Huizenga & Cooper, of Grand Rapids, Mich., argued for appellee. With him on brief was Richard C. Cooper.

Before BALDWIN and BENNETT, Circuit Judges, and MILLER, Senior Circuit Judge. 1

BALDWIN, Circuit Judge.

The decision of the United States District Court for the District of Kansas, holding claims 1-52 of U.S. Patent No. 3,940,495 (Flier) not invalid, and holding claims 1, 2, 8-20, 22, 23, 25, and 29-33 willfully infringed, is affirmed-in-part and reversed-in-part.

Facts

The Flier invention is the first successful process, and resultant product, for directly and continuously restructuring oil seed particles, preferably soy particles, into a textured, chewable, fibrous, meat-like food product. Restructuring is accomplished by mechanically working defatted, moistened soy particles under elevated temperature and pressure, into a flowable, plastic mass which is expanded into the restructured, fibrous, meat-like food product by suddenly releasing the pressure. The original application was filed July 10, 1964. A continued-in-part application was filed December 9, 1966. A continuation application was filed January 17, 1973, from which the patent issued. Although the 1964 application is more properly called a grandparent application, it will be referred to as the parent for the purposes of this opinion.

Interference 96,355, styled Wilding v. Flier v. Atkinson, was declared on May 23, 1968, involving the pending patent applications of Morris Wilding (assignor to Swift and Co.), Flier (assignor to Ralston Purina Co. (Ralston) ) and William T. Atkinson (assignor to Archer-Daniels-Midland Co. (ADM) ). Priority was eventually awarded to Flier on August 13, 1971. The interference was appealed, but settled by a cross-licensing arrangement on April 6, 1972. The settlement agreement provided that each party would grant to any third party making a written request a nonexclusive license under the claims of any existing or future patent.

On July 9, 1973, counsel for Flier specifically advised the examiner that an ADM patent application (the Dutch publication), No. 6506477, had been published on November 22, 1965, and that it corresponded generally to the Atkinson United States patent application which had been involved in the interference. The district court found specifically that this reference was brought to the examiner's attention after discovery in June, 1973, and that it was indeed a printed publication.

Claims which correspond to claims 8, 9, and 34-52 in Flier were allowed in an office action issued April 5, 1974. Additional claims were allowed in November 1, 1974. The remaining claims were allowed June 3, 1975.

Far-Mar-Co was licensed by ADM for the product described by the patent in suit. Upon issuance of Flier, Ralston offered a license to Far-Mar-Co, which was immediately declined. Ralston filed suit in district court for patent infringement approximately sixty days after Flier issued.

OPINION

The decisive issues in this case are:

1. Whether the trial court erred in deciding that Far-Mar-Co's burden of proof was to show by clear and convincing evidence that Flier was invalid.

2. Whether the trial court clearly erred in finding that the patent application of Archer Daniels Midland Company, No. 6506477 filed in the Patent Office of the Netherlands (Dutch publication) did not anticipate the claims of Flier.

3. Whether the trial court's finding that claims 10-13, 15-28, and 32 were descriptively supported by the parent application and thus entitled to the parent's 1964 filing date is clearly erroneous.

4. Whether the trial court's finding of willful infringement was clearly erroneous.

Burden of Proof

Far-Mar-Co contends that the district court erroneously imposed upon it the burden of proving insufficient disclosure in the parent application; also, that Ralston, as the party asserting adequate disclosure, should have borne the burden of demonstrating that adequate legal support exists. Ralston, on the other hand, argues that the district court correctly placed the burden of overcoming the presumption of validity by demonstrating insufficiency of disclosure on Far-Mar-Co, and found that Far-Mar-Co had not shown by clear and convincing evidence that it had met that burden.

Far-Mar-Co incorrectly treats the burden of establishing a prima facie case of insufficiency of disclosure as if it bears no relationship to the burden of overcoming the presumption of validity accorded a patent under 35 U.S.C. Sec. 282. A patent is presumed valid, and the burden of persuasion to the contrary is and remains on the party asserting invalidity. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed.Cir.1983), cert. denied, --- U.S. ----, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984). In addition, the party asserting invalidity also bears the initial procedural burden of going forward to establish a legally sufficient prima facie case of invalidity. If this burden is met, the party relying on validity is then obligated to come forward with evidence to the contrary. Before rendering its judgment, the court must determine whether "all of the evidence establishes that the validity challenger so carried his burden as to have persuaded the decisionmaker that the patent can no longer be accepted as valid." Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 885, 221 USPQ 1025, 1028 (Fed.Cir.1984). A party asserting invalidity based on 35 U.S.C. Sec. 112 bears no less a burden and no fewer responsibilities than any other patent challenger. Far-Mar-Co's burden of proof before the district court was to show by clear and convincing evidence that Flier was invalid. See, e.g., Pennwalt Corp. v. Akzona, Inc., 740 F.2d 1573, 1578, 222 USPQ 833, 836 (Fed.Cir.1984). The district court recognized and enunciated these rules. Accordingly, we hold that it did not place an impermissible burden upon Far-Mar-Co. 2 The question of whether disclosure satisfies the written description requirement of Sec. 112 is based on questions of fact. See In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.Cir.1984), cert. denied, --- U.S. ----, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985). Far-Mar-Co thus bears the burden of demonstrating that the court erred in its application of the law to the facts, see Bose Corp. v. Consumers Union, 466 U.S. 485, 104 S.Ct. 1949, 80 L.Ed.2d 502 (1984), or that its findings of fact were clearly erroneous.

Anticipation

Anticipation is a factual determination, revieawable under the "clearly erroneous" standard. Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed.Cir.1984). A finding is "clearly erroneous" when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed. United States v. U.S. Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746, 76 USPQ 430, 444 (1948); SSIH Equipment S.A. v. USITC, 718 F.2d 365, 381, 218 USPQ 678, 692 (Fed.Cir.1983). Anticipation requires that "all limitations of the claim are found in the reference, or 'fully met' by it." Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed.Cir.1983).

Ralston contends, and the trial court found, that the Dutch publication was deficient because it failed to disclose (1) the importance of a "minor amount of fat" present during extrusion; (2) a definition for the word "plexilamellar" which was used to describe the product; and (3) the desirability of "separate zones of confinement or orifices" in the machinery used to mix and extrude the product. These findings are clearly erroneous.

The first finding is clearly erroneous because the Dutch publication specifies the same starting material claimed in Flier, and the trade defines the starting material as having low levels of fat. The publication is therefore not deficient as to this element of Flier's claims.

The second finding, that the Dutch publication does not define "plexilamellar" is unsupportable in view of the following passage from page 2 of that publication:

The protein extrudate obtained according to the above mentioned method is a rough, resilient, dry to slightly moist to the touch, open celled foamy mass made up of interlaced interconnected strips of varying width and thickness which may appear fibrous or skin-like. The majority of the cells formed by this plexilamellar protein structure are.... [Emphasis added.]

The third finding is similar to the first, and fails for a similar reason. The Dutch publication discloses the use of a standard extruder which, at the time, came equipped with the structure specified in the Flier patent. The publication is therefore not deficient as to this element of Flier's claims.

As a result of our disposition of this issue, only those claims entitled to the effective filing date, July 10, 1964, of the parent application remain in issue. The trial court held and Ralston does not contest, that claims 1-9, 14, 29-31, and 33-52 were entitled only to the effective filing date of the 1966 application. Thus, we hold these claims to be invalid for having been described in a printed publication before the invention thereof by the applicant for patent. 35 U.S.C. Sec. 102(a).

Description Requirement

The trial court held that claims 10-13, 15-28, and 32 of Flier are entitled to the effective filing date of the 1964 parent application because the parent application complies with the written description requirement of 35 U.S.C. Sec. 112, first paragraph, which is incorporated in 35 U.S.C. Sec....

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