Anticipate This!™ | Patent and Trademark Law Blog

Kim v. Conagra Foods, Inc.

Posted in Opinion Commentary by Jake Ward on September 27, 2006

“Surrender” Under the Recapture Rule Requires That the Purpose of the Traverse Was to Overcome Prior Art and Secure a Patent.

(Fed. Cir. 2006, 05-1414)

Kim’s lawsuit originally asserted that ConAgra induced infringement of the claims through requiring licensees of “Healthy Choice®” to use ConAgra’s allegedly infringing recipes.  On appeal to the CAFC, Kim challenged the district court’s judgment of noninfringment of her U.S. Patent No. Re. 36,355 (the 355 patent).  Also, ConAgra cross-appealed the judgment that the patent claims are valid.  The CAFC affirmed both judgments of the district court.

The technology at issue relates to oxidizing agents used in breadmaking.  Kim had patented a replacement for potassium bromate.  Incidentally, the FDA had been encouraging the bread industry to find a replacment since potassium bromate was believed by the FDA to be carcinogenic.  Hmmm .  . . tasty.

The relevant 355 claims recited a replacer composition consisting essentially of ascorbic acid, food acid, flour and, in one claim, yeast.  Also of major importance to this suit, the relevant claims were added during reissue of the 355 patent. 

(A)  Recapture Rule and Validity:

After affirming the district court’s construction of the claim term “potassium bromate replacer composition,” the CAFC considered whether Kim improperly recaptured material surrendered during prosecution of her original patent?  During prosecution, Kim had changed to a “consisting essentially of” transition from a “comprising” transition.  She had also added a phosphate limitation.  Upon reissue, Kim added broader claims not requiring phosphate.  ConAgra argued that the addition of phosphate in the original prosecution was a surrender of non-phosphate claims.

Although a patentee may broaden the scope of a patent during reissue to include subject matter that had been erroneously excluded, the patentee is prevented from regaining subject matter that was surrendered in an effort to obtain allowance of the original claims.  In determining whether “surrender” of subject matter has occurred, the proper inquiry is whether an objective observer viewing the prosecution history would conclude that the purpose of an amendment or argument was to overcome prior art and secure the patent?

Under this standard, the CAFC held the prosecution history indicated that the addition of the phosphate limitation was not patentably significant.  The rejections during prosecution were instead overcome by modifying the transition phrase to read “consisting essentially of.”  The changes in food acid ranges were also not made to overcome a rejection.  Thus, Kim did not improperly broaden her claims and recapture “surrendered “subject matter.

The court also noted substantial evidence supporting the jury’s verdict that the claims were not anticipated or obvious.  For this further reason, the CAFC held the claims valid.   

(B)  Noninfringment:

Next, in finding the claims non-infringed, the court found that ConAgras products contained additional ingredients beyond those recited in Kim’s “consisting essentially of” claims.  “[W]ith respect to a ‘consisting essentially of’ claim, there is no infringement where the accused product contains additional, unclaimed ingredients that materially affect the basic and novel properties of the invention.”  Noninfringement was found because no relevant evidence was provided that showed the additional ingredients would not materially affect pertinent properties of the bread.  The testimony of Kim was not sufficient, as her conclusory statements were not based on the accused products themselves. 

Because direct infringement was not found, the CAFC avoided addressing whether there was the intent necessary for a finding of inducement.   “A finding of inducement requires both an underlying instance of direct infringement and a requisite showing of intent.” 

Accordingly, the district court’s judgments were affirmed in all respects.

2 Responses

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  1. Matt Delaney said, on January 9, 2009 at 12:39 pm

    “Noninfringement was found because no relevant evidence was provided that showed the additional ingredients would materially affect pertinent properties of the bread.”

    If no relevant evidence was provided to show the additional ingredients would materially affect the bread properties, shouldn’t infringement be found? Am I reading this right? The extra ingredients did not affect the basic properties of the bread?

    Should there be a “[not]” between “would” and “materially” in the blog statement?

  2. Jake Ward said, on January 9, 2009 at 3:32 pm

    Comment well taken and post revised, Matt. In relation to “consisting essentially of” language, the pertient rule to pull from this opinion is: “. . . there is no infringement where the accused product contains additional, unclaimed ingredients that materially affect the basic and novel properties of the invention.”

    In this case, ConAgra’s 7-Grain and Whole Wheat products contained additional ingredients beyond ascorbic and food acids (the claimed ingredients), such as vital wheat glutten, ferrous sulfate, and dough strengthening enzymes. Based on testimony of its expert witness, whom the court agreed with, ConAgra established that the additional ingredients materially affected functionality. Therefore, there was no infringement of Kim’s claims limited by the “consisting essentially of” transitional phrase.


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