Sperti Products, Inc. v. COCA-COLA COMPANY

• Decision Date: 17 August 1967
• Docket Number: Civ. A. No. 2700.
• Citation: Sperti Products, Inc. v. COCA-COLA COMPANY, 272 F.Supp. 441 (D. Del. 1967)
• Parties: SPERTI PRODUCTS, INC. and the Institutum Divi Thomae Foundation, Plaintiffs, v. The COCA-COLA COMPANY, Defendant.
• Court: U.S. District Court — District of Delaware

272 F. Supp. 441

SPERTI PRODUCTS, INC. and the Institutum Divi Thomae Foundation, Plaintiffs, v. The COCA-COLA COMPANY, Defendant.

Civ. A. No. 2700.

United States District Court D. Delaware.

August 17, 1967.

John J. DeLuca, DeLuca, Julian & Walsh, Wilmington, Del., for plaintiffs; William Schurtman, Shea, Gallop, Climenko & Gould, New York City, Albert E. Strasser, Melville, Strasser, Foster & Hoffman, Cincinnati, Ohio, of counsel.

Rodney M. Layton, Richards, Layton & Finger, Wilmington, Del., for defendant; Paul L. Ahern, Richard Russell Wolfe, George E. Bullwinkel, Wolfe, Hubbard, Voit & Osann, Chicago, Ill., of counsel.

OPINION

STEEL, District Judge:

This is a patent infringement action of which the Court has jurisdiction under 28 U.S.C. § 1338.

Plaintiff, The Institutum Divi Thomae Foundation (hereinafter "Foundation") is the owner, and plaintiff, Sperti Products, Inc., originally organized under the name of Sperti Foods, Inc., claims to be the exclusive licensee, of the three patents in suit. The defendant, The Coca-Cola Company, through its wholly owned Minute Maid Division, has produced frozen concentrated orange juice by methods which plaintiffs claim to have infringed the patents. The defenses are invalidity and non-infringement.

The "Sperti" Patent—U. S. Patent No. 2,588,337, filed April 17, 1950, issued March 11, 1952

This patent relates to the production of frozen orange juice concentrates adapted to be reconstituted for beverage purposes by the addition of water. The parties have stipulated that only Claims 2 and 3 need be considered, and that the Court's ruling on these claims will be dispositive of the Sperti issues.

The Sperti patent describes in a general way two methods which theretofore had been utilized in preparing orange juice concentrates. In one method, Sperti states, the concentration is achieved by subjecting the fresh juice to evaporation under vacuum at relatively low temperatures to minimize the adverse effect of heat on the taste of the concentrate and of the reconstituted beverage. Under this process, according to Sperti, some "cooked" taste is unavoidable, and the volatile true fruit flavor constituents of the fresh juice are almost totally lost during the evaporation. The second method which Sperti describes comprises concentrating the fresh juice by freezing and then separating the concentrate from the ice, usually by centrifuging, although other methods such as drainage under suction can be used. This method, Sperti states, has the advantage of eliminating the adverse effects of heat on the taste of the concentrate and avoiding the loss of volatile flavor constituents such as occurs during heat vacuum concentration. Under this freeze method practically all volatile flavor constituents are recovered in the concentrate. This method has the disadvantage, however, of inefficiency in that the sugar recovery is low due to the fact that large amounts of soluble solids (mostly sugar) are occluded in the residual ice and can not be recovered without re-processing the ice.

The Sperti patent states that his process preserves the advantages of freeze concentration in that the volatile flavors are retained and the cooked taste is eliminated, and at the same time the loss of soluble solids (i. e., sugar) which adhere to the ice is avoided.

Claim 2 of Sperti describes his process as

"A process of concentrating orange juice to a final product of predetermined desired Brix value and substantially without loss or impairment of its volatile flavor constituents and soluble solids which comprises

Partially freezing the juice and separating from the ice a concentrate having a Brix value of 20 to 50, the amount of said concentrate being restricted so that its water content is less than that of the desired final product,

separating the remaining soluble solids and liquor from the ice and

evaporating the liquor until the water content of the evaporated residue plus that of said concentrate equals the water content desired in the final product, and then

adding said evaporated residue to said concentrate."

Claim 3 calls for essentially the same series of steps as Claim 2 except that Claim 3 additionally calls for evaporating the sugar-containing liquid to a Brix of 50-80 degrees. (Plaintiffs' Proposed Finding No. 11).

The term Brix is a measure of the solids content of juice or concentrated juice, and in the fruit juice industry a measure in degrees Brix is a practical indication of the percentage of sugar present in the juice being measured.

Defendant contends that Claims 2 and 3 of the Sperti patent are invalid under 35 U.S.C. § 102(b) in that Sperti's claimed invention was patented or described in printed publications in this country more than one year prior to the filing date, April 17, 1950, of the Sperti application.

Defendant relies on the following prior art references to sustain the foregoing defenses:

(i) Monti U.S. Patent No. 761,387, issued May 31, 1904;

(ii) Jackson U.S. Patent No. 981,860, issued January 17, 1911;

(iii) Monti U.S. Patent No. 1,379,470, issued May 24, 1921; and

(iv) Text entitled "Fruit and Vegetable Juices", by Tressler, Joslyn and Marsh, published in 1939 by Avi Publishing Company.

A patent is subject to invalidation under Section 102 of the Patent Act only where the invention of the patent is identically disclosed by the prior art. Ling-Temco-Vaught, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 267 (2d Cir. 1967). None of the prior art which defendant has cited as an anticipation of Sperti meets the exacting requirements of Section 102.

Defendant likewise argues that the Sperti invention as a whole would have been obvious at the time it was made to a person having ordinary skill in the art and hence is invalid under 35 U.S.C. § 103. This section recognizes that a patent may be invalid even though the identical subject matter was not known to the art and hence the conditions of Section 102 can not be met.

In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) the Court said that § 103 of the Patent Act lends itself to several basic inquiries. It said at 17-18, 86 S.Ct. at 694:

"* * * Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or non-obviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or non-obviousness, these inquiries may have relevancy. * * *"

Section 103 enacted in 1952 codified the standard of invention which theretofore existed. Congress hoped by such codification to emphasize "non-obviousness" as an operative test of invention rather than the less definite "invention" language of Hotchkiss v. Greenwood, 11 How. 248, 266, 13 L.Ed. 683 (1850). Under Section 103 the "flash of genius" theory has no place in the requirement of invention. Graham v. John Deere Co., supra, 383 U.S. at 15, 86 S.Ct. 684; Jones Knitting Corporation v. Morgan, 361 F.2d 451, 457 (3d Cir. 1966). In the latter case the Court pointed out at 457 that under Section 103 it is the end product (result) that matters, and if this product (result) advances the art a single step, there is invention so long as that step is not obvious to those of ordinary skill in the art.

In Radio Corporation of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7-8, 55 S.Ct. 928, 79 L.Ed. 163 (1934), referred to with approval in Jones Knitting Corporation v. Morgan, supra, 361 F.2d at 455, the Court stated that the presumptive validity of a patent would not be overcome except by convincing evidence of error and that one who assailed the validity of a patent "bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance."

There can be no doubt that many of the concepts which Sperti utilized in his invention had been a part of the prior art for years before his application was filed. The freezing of juice and centrifuging of the frozen slurry or slush to spin off a concentrate high in soluble solids had been known for about forty-five years. This process, however, was not economically practical because of the loss of soluble solids in the residual ice (R 226). The Jackson patent No. 981,860 (1911) and the Gore process described in Fruit and Vegetable Juices, by Tressler and Joslyn (1939) (DX 63, p. 361), recognized that soluble solids (mostly sugar) adhered to the residual ice and that it was desirable to capture these by centrifuging that ice. Gore suggested that the ice be warmed slightly before it was centrifuged. Monti's patent No. 1,379,470 (1921), provided for separating the juice concentrate from the frozen slurry by centrifuging, or by other means not relevantly different, and thereby obtaining a concentrate of 25 degrees Brix, dividing this concentrate into equal parts, and evaporating one part to about 85 degrees Brix, and then mixing the evaporated part with the unevaporated part to obtain a syrup of about 60 degrees Brix.

It is to be noted, however, that none of the prior art had recognized that the valuable solids which adhered to the residual ice after centrifugal action could be captured by washing or thawing the ice, and then evaporating the resulting liquor to obtain a further concentrate which could be added to the spun off or centrifuged concentrate in such proportions as to produce a blended concentrate with a predetermined desired Brix. This is what the Sperti patent teaches.

In this way Sperti solved the problem of recovering the solids occluded to the residual ice after the frozen slurry had been centrifuged and utilizing them as part...