Roberts Dairy Co. v. United States

• Decision Date: 28 January 1976
• Docket Number: No. 257-69.,257-69.
• Parties: ROBERTS DAIRY COMPANY et al. v. The UNITED STATES, v. MILTON G. WALDBAUM CO., and Marshall Foods, Inc. (formerly Marshall Produce Co.), et al., Third-Party Defendants.
• Court: U.S. Claims Court

530 F.2d 1342

ROBERTS DAIRY COMPANY et al. v. The UNITED STATES, v. MILTON G. WALDBAUM CO., and Marshall Foods, Inc. (formerly Marshall Produce Co.), et al., Third-Party Defendants.

No. 257-69.

United States Court of Claims.

January 28, 1976.

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Richard A. Huettner, New York City, for plaintiff. Francis T. Carr, New York City, atty. of record. Kenyon & Kenyon Reilly Carr & Chapin, New York City, of counsel.

D. C. Bradford, III, Omaha, Neb., atty. of record, for the third parties, Milton G. Waldbaum Co. and Marshall Foods, Inc. (formerly Marshall Produce Co.). Bradford & Bloch, Omaha, Neb., of counsel.

Michael W. Werth, Washington, D.C., with whom was Asst. Atty. Gen. Rex E. Lee, Washington, D.C., for defendant.

Before COWEN, Chief Judge, DAVIS and KASHIWA, Judges.

OPINION

PER CURIAM:

This case comes before the court on plaintiffs' exceptions to the recommended decision filed May 29, 1974, by Trial Judge Joseph V. Colaianni, pursuant to Rule 134(h), having been submitted to the court on the briefs and oral argument of counsel. Upon consideration thereof, since the court agrees with the recommended decision, as hereinafter set forth^*, it hereby affirms and adopts the same as the basis for its judgment in this case. Therefore, it is concluded that plaintiffs are not entitled to recover and their petition is dismissed.

OPINION OF TRIAL JUDGE

COLAIANNI, Trial Judge:

Plaintiffs' original petition sought recovery under 28 U.S.C. § 1498 of reasonable and entire compensation for the unauthorized use and manufacture by or for the United States of certain egg products which were alleged to be covered by United States Letters Patent No. 3,113,872 (hereinafter referred to as '872), entitled "Method of Treating Shelled Eggs," issued December 10, 1963, on an application filed January 26, 1960, by Eynon Jones and Albert R. Johnson, and United States Letters Patent No. 3,093,487 (hereinafter referred to as '487), entitled "Egg Products and Processes for Preparing Same," issued June 11, 1963, on an application filed February 27, 1961, by Eynon Jones, Oliver H. Tracy, and Clarence B. Deffenbaugh.

Plaintiffs also sought recovery under 28 U.S.C. § 1491 of damages for defendant's use or manufacture of plaintiff's inventions during 1960 and 1961 while plaintiffs' patents were still pending in the Patent Office. During the course of pretrial discovery, plaintiffs withdrew that portion of their petition which pertained to the contract counts under 28 U.S.C. § 1491.

The '872 patent is wholly owned by Prep Foods, Inc. The '487 patent is jointly owned by Eynon Jones, Oliver H. Tracy, Roberts Dairy Co., Lewis R. Dunham, and Edward Johnson. All of the above owners joined in this lawsuit as plaintiffs.

As a result of notices issued by the court under the provisions of Rule 23(b), now Rule 41, at defendant's request, nine third-party defendants entered an appearance in this suit. These nine parties were: (1) A. J. Pietrus & Sons Co., (2) Harp's Green Valley Farms, Inc., (3) Henningsen Foods, Inc., (4) Marshall Foods, Inc. (formerly Marshall Produce Co.), (5) Mid-Central Egg Products, Inc., (6) Milton G. Waldbaum Co., (7) Monark Egg Products, Inc., (8) Southwestern Egg Producers (hereinafter referred to as SWEP), and (9) Tranin Egg Products Co. Because of plaintiffs' decision not to present evidence of alleged infringement against Henningsen Foods, Inc., and Tranin Egg Products Co., these parties were dismissed from this action without costs or attorneys' fees. Mid-Central Egg Products, Inc., is now a division of Monark Egg Products, Inc., and the defense of the former has been wholly taken over by the latter.

Third-party defendants Marshall Foods, Inc., Milton G. Waldbaum Co., and A. J. Pietrus & Sons Co. were each represented by counsel at trial, and each has filed proposed findings of fact and a brief in support of their positions.

The only issues under consideration relate to patent validity and infringement since, by agreement of the parties, the issue of accounting has been deferred until after liability is established.

I. Background

The subject matter of the present litigation involves egg products which are allegedly produced in accordance with the steps outlined in the hereinafter-stated claims. Although the claims do not indicate what is done to the products after they are treated in accordance with the claimed processes, the specifications of the patents in suit disclose that the products are then dehydrated, packed and sold in commerce as instant egg or powdered egg products. A purchaser has only to add water to the instant egg or powdered egg material to obtain a product that is similar, both in appearance and taste to freshly shelled eggs.

The principal constituents of an egg are the white and the yolk. Egg white is essentially fact-free and consists of about 88% water, 11 1/2% protein and the remainder, minerals and natural reducing sugar, which, although only about 1% or less, is extremely significant for reasons which will hereinafter be discussed. The yolk contains almost all the fat content of the egg and comprises about 49% water, 33% fat and 16% protein.

The yolk fat, on the other hand, consists of approximately one-third saturated fats and two-thirds unsaturated fats. The unsaturated fats have a lower melting point than the saturated fats and the viscosity (resistance to flow) of the fats vary inversely with temperature. Thus, as the temperature increases, the viscosity decreases and the fats become more free-flowing at higher temperatures.

Eggs may become contaminated with various microbiological organisms which are pathogenic to man. Included among these organisms is salmonella, which is known to have over 1,300 different varieties. Salmonella poisoning, which usually results in an upset digestive system with accompanying intense vomiting and diarrhea, can be fatal to the very young and the very old.

Salmonella, which can be present in the intestines of animals may find its way into an egg through a crack in the shell. Since salmonella can also be present in the intestines of humans, it may get into bulk shelled eggs in a processing plant through a plant worker who is a carrier of the organism. To this day, salmonella continues to be considered a fairly serious health hazard in the United States.

However, salmonella can be destroyed by subjecting an egg to heat, above a base line figure which is generally taken as 140 ° F., for a predetermined length of time. A time/temperature relationship for destroying salmonella has been worked out. Specifically, an exposure of 15-20 minutes is necessary for a temperature setting of 140° F., a 3 1/2 minute exposure is necessary at a temperature of 150° F., but only a 1 or 2 second exposure is required at a temperature of 160° F.

Water is a necessary ingredient for the multiplication of salmonella. The absence of water, such as when an egg product is converted to a dried powder form, inhibits the growth of salmonella. The absence of water will, however, not result in the destruction of the salmonella; instead, it exists in a dormant state and resumes its growth upon reconstitution by the addition of water. While tests have shown that salmonella also becomes dormant at a temperature below 40° F., it has also been determined that the salmonella is not destroyed by subjecting the egg product to freezing temperatures.

The dried egg products produced during World War II were manufactured without any steps being taken to kill the pathogenic bacteria which might be present. Instead, the eggs, after being broken and mixed, were sent directly to a spray drier without any further processing. The outgoing product left the spray drier at a temperature of approximately 130° F., which was too low a temperature to accomplish pasteurization, and, therefore, any salmonella present in an egg processed in such a manner would remain alive but dormant in the dried egg product that resulted.

The failure to destroy salmonella did not present a problem for ingredient products, i. e., products which were subsequently intended to be incorporated into baked products, since the temperature to which the baked products was raised would greatly exceed the temperature necessary to kill any dormant salmonella. However, in those instances where the product manufactured was not to be subjected to a subsequent baking step, but was instead intended to be reconstituted into its former state by the addition of water, such as would be the case if one wished to prepare a scrambled egg, a potentially serious problem existed. Specifically, if the powdered egg product was contaminated with dormant salmonella, upon reconstitution the salmonella would be reactivated, and the temperature reached by the scrambled eggs prepared in a skillet or in a steam table used for mass feeding would be too low to kill the reactivated salmonella. Not only would the temperature to which the scrambled egg was raised be too low to kill the salmonella, it would be in the range that was favorable for its growth. This explains why salmonellosis is often associated with the mass feeding that the Armed Forces must necessarily employ.

Storage of dried eggs which were produced by processes prevalent during World War II also presented problems. The dried eggs would in time change in color from yellow to brown, and develop an extremely bitter flavor that made them inedible. These changes resulted, it was later learned, from a "browning reaction" which was caused by the natural reducing sugar in the egg chemically reacting with a portion of the egg protein. The "browning reaction" was found to continue even though the egg was in the dry state, and stored at ambient temperatures.

To remove the reducing sugar from the powdered egg and thus prevent the "browning reaction" from occurring, desugaring processes were developed. The desugaring methods...