Tee-Pak, Inc. v. St. Regis Paper Company
| Decision Date | 14 February 1974 |
| Docket Number | No. 73-1369.,73-1369. |
| Citation | 491 F.2d 1193 |
| Parties | TEE-PAK, INC., Defendant-Appellant, v. ST. REGIS PAPER COMPANY, Plaintiff-Appellee. |
| Court | U.S. Court of Appeals — Sixth Circuit |
James W. Clement, Chicago, Ill., for defendant-appellant; Ernest Cheslow, Chicago, Ill., on brief; Victor DeMarco, Jones, Day, Cockley & Reavis, Cleveland, Ohio, of counsel.
Charles R. Rust, Cleveland, Ohio, for plaintiff-appellee; Bruce B. Krost, Wodling, Krost, Granger & Rust, Cleveland, Ohio, on brief; Clyde H. Haynes, New York City, of counsel.
Before PHILLIPS, Chief Judge, and EDWARDS and MILLER, Circuit Judges.
Tee-Pak, Inc. (Tee-Pak) appeals from a grant of partial summary judgment holding claims 5 and 7 of Reissue Patent No. 24,992 invalid under 35 U.S.C. §§ 102(b) and 251. We reverse.
For an extensive discussion of the facts of this case reference is made to the opinion of the District Court, reported at 352 F.Supp. 309 (N.D.Ohio 1973). A summary of the pertinent facts will be stated in this opinion to the extent necessary to dispose of the issues presented on appeal.
Tee-Pak is the owner of Reissue Patent No. 24,992, reissued May 30, 1961, on an application filed August 11, 1960. The original patent, No. 2,847,313, was issued August 12, 1958, on an application filed December 1, 1955.
St. Regis Paper Co. (St. Regis) filed three motions for summary judgment of invalidity and one for summary judgment of non-infringement. These motions were based on: 1) 35 U.S.C. § 251, 2) 35 U.S.C. § 102 and § 103, 3) 35 U. S.C. § 112 and 4) 35 U.S.C. § 271, respectively. The District Court granted partial summary judgment and held claims 5 and 7, the only claims in issue, invalid under 35 U.S.C. §§ 102(b) and 251. We reverse. In so holding, we do not reach the questions presented by St. Regis' remaining motions for summary judgment. These were not decided by the District Court, and, in view of our disposition of the case, we also decline to rule on them.
The patent in issue is entitled "Method of Treating Fresh Meats" and relates to a method of wrapping fresh ground meat, such as beef, with a wrap so as to extend shelf life by postponing the formation of a bright red pigment.
Claims 5 and 7 are in issue. The essential steps of the patented method as set forth in independent claim 5 are:
Claim 7 is dependent on claim 5 and recites that the meat is beef. The crucial aspects of this appeal revolve around step 1.
The theory behind the invention is to control the color cycle in fresh ground meat by optimizing its reaction kinetics. It is known that fresh cut meat has a purplish color which is not attractive to the consumer. Within about thirty minutes after cutting, the meat changes to a bright red color. This is known as "bloom", and it is this color which is attractive to the consumer. Continued exposure to the air causes the meat to take on a brown-grey appearance.
The chemistry and reaction kinetics of these changes are widely understood. Meat contains purple-red pigments called myoglobin and hemoglobin. When meat is exposed to the air, these pigments combine loosely with oxygen (oxygenation) to form oxymyoglobin and oxyhemoglobin. These pigments are scarlet-red and account for the "bloom." Continued exposure to the air causes these pigments to undergo an oxidation reaction, thereby forming metmyoglobin and methemoglobin which are brownish-grey in color.
These reactions are dependent on time, temperature, oxygen concentration and the presence of bacteria and enzymes. The patented method wraps the meat before the oxygenation reaction is completed. When the meat is ready for sale or consumption, the package is unwrapped. Shortly after opening, the meat turns a bright red color.
A prerequisite to a grant of summary judgment is that there be no genuine issue as to material fact and that the moving party be entitled to a judgment as a matter of law. Rule 56, Fed.R. Civ.P.
In Bohn Aluminum and Brass Corp. v. Storm King Corp., 303 F.2d 425, 427 (6th Cir. 1962), this court, speaking through Judge Weick, stated the guidelines governing motions for summary judgment:
In appropriate circumstances when the invention is easily understood and there is no need for expert testimony, summary judgment may be a useful tool in cases where the validity of a patent is involved. This court has upheld summary judgments of invalidity. See, e. g., Ballantyne Instruments and Electronics, Inc. v. Wagner, 345 F.2d 671 (6th Cir. 1965); Bobertz v. General Motors Corp., 228 F.2d 94 (6th Cir. 1955), cert. denied, 352 U.S. 824, 77 S.Ct. 32, 1 L.Ed.2d 47 (1956).
This tool, however, is to be used sparingly. In S. J. Groves & Sons Co. v. Ohio Turnpike Commission, 315 F.2d 235, 237 (6th Cir.), cert. denied, 375 U. S. 824, 84 S.Ct. 65, 11 L.Ed.2d 57 (1963), this court, speaking through Judge Shackelford Miller, stated:
See also Hart v. Johnston, 389 F.2d 239 (6th Cir. 1968).
Moreover, in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), the Supreme Court stressed the importance of a patentee having a full and fair opportunity to litigate the validity of his patent.1 In view of this decision and the possibility of in rem invalidity, it is imperative that the court, in the words of Judge Weick, "construe the evidence in its most favorable light in favor of the party opposing the motion and against the movant." Bohn, supra, at 427.
An additional consideration that is present in patent cases is the statutory presumption of validity. A patent is presumed valid and the burden of proving its invalidity rests squarely on the party challenging it. 35 U.S.C. § 282. Even though this presumption may be weakened by the failure of the Patent Office to consider all pertinent art, the degree by which it is weakened depends on a balancing of the pertinence of the newly cited art with the pertinence of the art considered by the Patent Office. Thus, unless the presumption has been destroyed, it is a relevant factor for the court to consider in ruling on a motion for summary judgment. See Ballantyne, supra, at 674.
We have held that a description of a patented invention within the meaning of 35 U.S.C. § 102(b)2 must be in Ballantyne Instruments and Electronics, Inc. v. Wagner, supra, 345 F.2d 671, 673-674 (6th Cir. 1965). See also Allied Wheel Products, Inc. v. Rude, 206 F.2d 752, 759-760 (6th Cir. 1953).
With these considerations in mind, we turn now to the issues of this case. A comparison between claim 5 and the prior art relied on by the District Court in its opinion is as follows:
Food Industries Article
at page 22 Claim 5
"Even more important is the "A method for controlling the
length of time the cut beef has development of the incipient bloom
been exposed to air before color and organoleptic characteristics
packaging. When cut, fresh beef of comminuted fresh meats which
has a purple-red hue — the comprises enclosing comminuted fresh
true color of the flesh. But this meat within about 30 minutes after
color rapidly changes to a bright comminution in a flexible film which
red, due to oxygenation of has a permeability of oxygen through
myoglobin present in the meat. If said film ranging from about 0.01 x
the meat is wrapped directly after 10(-10) to 1.0 x 10(-10)
it is cut — before the cc.-mm./sec./cm.2/cm. Hg. at
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