Injunctive Relief: District Court Abused Discretion by Failing to Consider eBay Factors

Ecolab v. FMC Corp. (Fed. Cir. 2009)

Both Ecolab and FMC sell chemical mixtures used by beef and poultry factories to help protect raw meat from “pathogens, such as E. coli and salmonella.” Both parties hold patents on their mixtures, and in litigation each asserted infringement against the other. A jury awarded both parties damages for infringement. However, the district court refused to issue permanent injunctive relief. On appeal, the Federal Circuit invalidated Ecolab’s claims and then focused on whether the district court erred in refusing to grant an injunction to stop Ecolab from infringing.

Injunctive relief is awarded according to the traditional principles of equity. In eBay v. MercExchange, the Supreme Court interpreted those principles to require a patentee seeking injunctive relief to demonstrate “(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.”

In this case, the district court did not explicitly consider any of the eBay factors. “That is an abuse of discretion.” In this instance, the Federal Circuit refused to consider whether – based on the fact at hand – an injunction would be proper. Rather, on remand the district court must consider whether relief is warranted based on a consideration of the four listed factors.

Note:

  • While construing claims, the decision distinguishes Chef America’s statement that claims are construed “as written, not as the patentees wish they had written it.” “Because the claim language at issue in Chef America was unambiguous, that case is distinguishable from the present case. In the present case, the definition of “sanitize” is ambiguous in that it does not indicate when consumption is to take place . . . and the district court did not err when it construed the term “sanitize” to mean that the treated meat has become safe for human handling and post-cooking consumption.”

105 thoughts on “Injunctive Relief: District Court Abused Discretion by Failing to Consider eBay Factors

  1. “Here, it is clear that the Applciant meant that the period of time would be fine tuned to whatever would be required for the chicken to pass inspection for shipping and sale in its raw state to consumers. That period of time would surely vary slightly based on the size and type of the fowl, among other things, so specifying a period of time would have been overly narrow. ”

    I’m sorry but didn’t we just have a thread in the last week or two regarding a case in which “context dependent” claim construction was smacked down by the Federal Circuit? Something about a geographic locator device?

    It’s a rhetorical question.

  2. “As an aside note, you have problems with adjectives such as “suffciently,” “reasonably,” “substantially,” and the like when it comes to claims, is that a fair statement?”

    I have a problem with “reasonably”. I’ve never seen that in a claim before and if I did it would be a sad day. As for “substantially” it all depends on context and how the term is defined.

    It’s best to avoid these terms, whenever possible (which is always). I don’t think anyone would disagree with that.

  3. “You’re mischaracterizing, misunderstanding, etc., the “holding”, if any, of the case.”

    Nice unsupported, conclusory opinion.

    Have a good day!

  4. “Don’t know if you can appreciate the holding, but from a litigation standpoint, the bar of invalidity under 112 has been lowered from the ‘clear and convincing evidence’ standard.”

    You’re mischaracterizing, misunderstanding, etc., the “holding”, if any, of the case.

    Please continue to flail away.

  5. Need to finish the thought…

    Don’t know if you can appreciate the holding, but from a litigation standpoint, the bar of invalidity under 112 has been lowered from the “clear and convincing evidence” standard by asserting ambiguity of a definition (and not the claim) during the claims construction phase.

  6. “So what?”

    Don’t know if you can appreciate the holding, but from a litigation standpoint, the bar of invalidity under 112 has been lowered from the “clear and convincing evidence” standard.

  7. What is insanity is the loss of focus on some peoples’ parts on what the term “sanitize” means in view of the intrinsic evidence. It’s not just the definition that is provided that rules the day. If that definition is not entirely objectively clear, there is additional intrinsic evidence to turn to.

    In particular, I am talking about the process actually enablingly disclosed by the Applicant in the specification. Here, it is clear that the Applciant meant that the period of time would be fine tuned to whatever would be required for the chicken to pass inspection for shipping and sale in its raw state to consumers. That period of time would surely vary slightly based on the size and type of the fowl, among other things, so specifying a period of time would have been overly narrow. Also, the standrards for inspection could change, so specifying a range of bacterial population would also be overly narrow. Any argument that the claim must be construed as limited to making raw chicken safe to eat, or as indefinite for failing to recite or disclose a precise range of bacteria levels, is an argument for an overly strict approach that would not be good policy.

    Where the specification does enablingly disclose something of value worthy of patent protection, it would not be good policy to rob Applicants of their well-earned right over some imagined ambiguity or subjectively perceived flaw in the claim or specification drafting. Courts routinely, and wisely, construe claims to encompass that which the Applicant enablingly disclosed, and that is as it should be. The failed attempt to destroy the Applicant’s right in this case merely points up how the system still works well in that regard. Anyone arguing for a stricter approach needs to get their priorities straight.

  8. “The holding of this case is that Philips has been extended to include construction of not only unambigously, expressly, and intrinsically defined claim terms but also “definitions” of claim terms alleged to be ambigious.”

    So what?

    Sheesh.

  9. Thank you. You made my point when I said

    “The holding of this case is that Philips has been extended to include construction of not only unambigously, expressly, and intrinsically defined claim terms but also “definitions” of claim terms alleged to be ambigious.”

  10. “Do you have a case where Philips has been extended to include construction of definitions intrinsically provided?”

    Sure I do. It’s called Ecolab v. FMC Corp.

    Can you stop now? At this point it’s getting painful.

  11. Do you have a case where Philips has been extended to include construction of definitions intrinsically provided?

    I didn’t think so.

  12. “The holding of this case is that Philips has been extended to include construction of not only unambigously, expressly, and intrinsically defined claim terms but also “definitions” of claim terms alleged to be ambigious.”

    You’re overreacting. You should stop now.

  13. Your arguments are unpersuasive because they merely attempt to rationalize in your mind the holding of the court’s opinion.

    Additionally, with respect to your and Malcolm’s belief that the definition is indefinite, I would accept your argument that it is indefinite if you could provide some evidence that more than one level of bacteria population exists that is fit for human handling and consumption. What evidence do you have (or what evidence is there) that there is more than one level of bacteria population that is fit for human handling and consumption? If there is only ONE, then the definion is not indefinite. Your comments which suggest that the definition is indefinite have been unsupported by facts.

  14. The holding of this case is that Philips has been extended to include construction of not only unambigously, expressly, and intrinsically defined claim terms but also “definitions” of claim terms alleged to be ambigious.

    That’s too bad because recourse for indefiniteness already exists as an invalidity attack under 112.

  15. Malcolm,

    As an aside note, you have problems with adjectives such as “suffciently,” “reasonably,” “substantially,” and the like when it comes to claims, is that a fair statement?

    If so, I used to, too, especially in the context of the regulations that pilots should adhere to. “reasonable” and “reasonably” are used quite often, and it drove me nuts as to what the hell these meant.

    I have learned from law school is that these terms are considered objective (to my personal displeasure and confort), and that it boils down to what the collective mind of a jury (or the single mind of a judge in a bench trial) says it means. I don’t like it, but I accept it to be the way it is.

  16. Malcolm,

    “If an inventor is so (*ahem*) “ordinary” that he/she can’t be bothered to provide this meager level of “technical detail” then a patent should be not granted. And this is where the technical background and IQ of the PTO examiners is needed most: they need to be able to tell the crap from the non-crap and they need the tools to quickly dispatch with the crap.”

    According to your statement, this is a 112 issue of invalidity — not a Philips issue of claims construction.

    A definition of “sanitization” was unambiguously provided. It was expressed within the four walls of the patent. To that there can be no disagreement. Under Philips, the court could not turn to extrinsic evidence because a definition was intrinsically provided. The court should have construed the term “sanitizing” as it was defined in the claim.

    Your issue is that the unambigously-provided definition is itself ambiguous. If this is true, then this goes to an issue of invalidity under 112 — not one of claims construction.

    “but if you’ve got credible, competing qualified experts who can’t agree on the meaning of a term, then the right thing to do is say: this claim is crap.”

    Your problem here is that it doesn’t matter what the experts think because the definition of “sanitizing” was expressly provided. Under Philips, the court should never have turned to the experts to see what their thoughts were. Period.

    Now, if the experts can’t agree on the meaning of the “definition” of the claim term — not the meaning of the “claim term” — then it is an issue of indefiniteness and invalidity under 112.

    The problem here in this case is the masterful job of obfuscation performed by the lawyers. By taking a term in the definition and not a term in the claim, by leaching on to “fit … for consumption” in the context of fowl, it was not to hard to distract the focus of attention from bacteria of uncooked food to cooked food because we pretty much share a common knowledge that uncooked fowl is probably not fit for consumption. By being able to leach on the definition of the claim and not the claim, they were able to twist this into a Chef America issue and generate an issue of “ambiguity” with the claim term. This obfuscation was sufficient enough for four judges to lose sight of Philips and its prohibition of extrinsic evidence when it comes to claims construction. The patentee acted as his own lexicographer and provided a definition. The issue of Philips has been resolved. If the lexicographer’s defintion is in itself ambiguous as you assert (and of which I disagree), then it falls outside the scope of Philips and into the scope of 112. The lawyers were successful (and hats off to them!) in turning a 112 issue into a Philips issue. It’s is such a shame that the courts (especially the CAFC) lost sight of proper, analytical, patent law methodology.

    “I believe these document (as of the appropriate time period) are what the court should have relied on, by the way, to properly construe the objective definition of “safe for consumption.”

    As I have said, Malcolm, the problem here is that the courts should never had entertained this as a claims construction issue because “safe for consumption” is not part of the claim; rather, it should have entertained this as an invalidity issue because, according to you, the following is vague:

    “The terms “sanitize” and “sanitization” denote a bacterial population reduction to a level that is safe for human handling and consumption.”

    BTW…I agree with you that the information provided by you is one way of providing objectiveness; it’s just not the only way.

  17. “I wonder if one can be served a beating chicken heart or fresh uncooked liver or other organ at a Japaneses izakaya drinking spot”.

    Well, the liver isn’t still beating, but raw liver is rather common here; my wife loves the stuff. I prefer my hearts and livers cooked, but horses for courses; I prefer my horse raw, for instance, and will have my tuna any way.

    Cheers, Luke

  18. I’ve found the quote I wanted. From Technip v Rockwater by Robin Jacob, quoting Lord Denning in Catnic:

    “Finally, puposive construction leads one to eschew what Lord denning in Catnic called:

    “The kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.”

    Pedantry and patents are incompatible. In Catnic, the meticulous verbal analysis” was the argument that, because the word “horizontal” was qualified by “substantially” whereas “vertical” was not, the latter must mean “geometrically vertical”".

    Quote over. Thanks everybody, for providing us in “sanitize” with at least as much fun as Brits have had with “vertical” in Catnic.

    Can Jacob LJ possibly be right though, that pedantry and patents are incompatible?

  19. This describes standards for “ready to eat” poultry (as opposed to raw) but is a good example of how it’s done:

    link to fsis.usda.gov

    For evaluating the possible number of organisms that could survive and thus present a risk to consumers, it is assumed that a consumer is eating a 100 (.3.5 ounces) grams of ready-to-eat ground poultry product. Further, it is assumed that there is a 70% yield after cooking. Therefore, 100 grams of ready-to-eat product is equivalent to 143 grams of raw product. For 143 grams of raw product, a 97.5% confidence upper limit for the number of Salmonella in the product is
    approximately 5,362,500 total organisms. Thus, for the “worst case” the number of organisms in 143 grams of raw ground poultry product is assumed to be 6.7 log10.

    ——————

    That, friends, is objective (at least when accompanied by a description of the appropriate test).

    If an inventor is so (*ahem*) “ordinary” that he/she can’t be bothered to provide this meager level of “technical detail” then a patent should be not granted. And this is where the technical background and IQ of the PTO examiners is needed most: they need to be able to tell the crap from the non-crap and they need the tools to quickly dispatch with the crap.

  20. WCG: “the phrase which defines “sanitizing” is objective”

    No, it’s not.

    “The expert(s) will testify at trial what bacteria population level is fit for human handling and consumption”

    That is insanity, friend. This is a claim construction issue. One could rely on an expert’s declaratoin to establish that a particular extrinsic document is the correct document to rely on but if you’ve got credible, competing qualified experts who can’t agree on the meaning of a term, then the right thing to do is say: this claim is crap.

    I believe these document (as of the appropriate time period) are what the court should have relied on, by the way, to properly construe the objective definition of “safe for consumption”:

    link to fsis.usda.gov

    That definition would describe both the test utilized and the minimum (or maximum) result (in terms of, e.g., bacterial colony count) achieved by the test. Anything else is quite simply worthless to everyone involved, including consumers of chicken like you and me who ultimately end up paying for the costs of these “innovative” tests.

  21. don’t bother (aka Malcolm),

    The Philips case applies to terms in the claim. Here, “sanitizing” appear in the claim and a definition was provided intrinsically.

    What case law do you have to support your notion that the court must construe non-claim terms? It certainly isn’t in Philips. Case, please.

  22. don’t bother (aka Malcolm),

    “How does the jury decide if the accused process infringes if they don’t know what “safe for…consumption” means?”

    That’s easy to answer. Through expert testimony (see my hypothetical testimony above). The expert(s) will testify at trial what bacteria population level is fit for human handling and consumption. Then, the expert(s) will testify to what level the accused product reduces the bacteria population level. The jury makes the call based on these facts.

    Not too tough, is it?

    BTW…you do realize that “bacteria population” is not term of the claim to be construed, right? Because the phrase which defines “sanitizing” is objective and provides an ascertainable standard from which the jury can make a deicsion, there is (and was) absolutely no need to introduce extrinsic evidence during the Markman phase to construe “sanitizing” other than how the patentee defined it.

  23. “Therefore, “safe for consumption” means a condition achieved by contacting the surface(s) of the fowl with the acid for period of time greater than or equal to one instant. Voila.”

    HAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHA

    cut/paste

    HAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHAHAHAHAHAHAHAHAHHAHHAHAHAAHHAHAHAHHHHAAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHHAHAHAHAHAHHAHAHAHHAHAHAHAHHAHAHAHA

  24. “What is the fixed, definite and objectively-discernable meaning of the term “safe for consumption”, broje?”

    Once again, from the patent:

    “Typically, sanitization occurs substantially instantaneously at the peracetic acid concentrations described here. Thus, rapidly spraying the peracetic acid solution onto the bird, or quickly and momentarily dipping the bird into a container of peracetic acid solution will sanitize the bird. However, because of the many internal and external surfaces of the bird, application of the peracetic acid by dipping or spraying may not lead to immediate contact at all surface points, and the actual application time may be more protracted. Thus, the routine bacteriological tests that are conducted on processed fowl may suggest an actual application time equal to or greater than 0.5, 1, 5, 10, or 15 minutes, or an increase in peracetic acid concentration or that other efforts be taken to ensure a more complete contact of the peracetic acid with the fowl. That contact is at the surface(s) of the fowl.”

    Therefore, “safe for consumption” means a condition achieved by contacting the surface(s) of the fowl with the acid for period of time greater than or equal to one instant. Voila.

  25. “If there is a dispute as to the level, then it is a question of fact for the jury to decide.”

    Nuh-uh. What bacteria level is covered by the claim (i.e. what level is safe for…consumption) is a matter of law to be decided by the judge.

    Malcolm got it mostly right when he posted:

    “I’m arguing that the claim is crap because it is either absurdly narrow (if properly construed) or its hopelessly ambiguous. Your incredulity should be directed to the judges in the case who appear to be satisfied by claim limitations (‘safe for consumption’) that, to the extent they are not taken literally, are objectively meaningless. Might as well just put an asterix after the claim: *If you think you infringe, please provide patentee with a description of your method and the value of your company. Patentee will provide an explanation of the term in due course.”

    The claim failed its public notice function because it did not provide potential infringers with any possibility of objectively determining whether they infringe or not. The court’s decision to ignore that indefiniteness is another matter.

    “One thing is for certain — the level does not need to be decided during the Markman phase. The standard is ascertainable and objective — not vague or ambiguous as others have argued.”

    You keep saying that. But that doesn’t make it so.

    Basic infringement analysis: step 1) properly construe the claim; and 2) compare the accused device/process to the properly construed claim. How does the jury decide if the accused process infringes if they don’t know what “safe for…consumption” means?

    “What may be vague, however, is the actual level, and if there is a disagreement as to the level, then there is a material issue of fact, i.e., a question of fact for the jury to decide.”

    No. If there is a disagreement as to what the claim actually covers, and doesn’t cover, that is a question of law to be decided by the court.

  26. Malcolm,

    Here’s the claim with “sanitizing” substituted for the definition in the spec:

    “A method for [reducing the bacteria population of] fowl that has been killed, plucked and eviscerated [to a level that is safe for human handling and consumption]….

    If the accused product does not reduce the bacteria population to a level that is safe for human handling and consumption, then there’s no infringement.

    If the accused product does reduce the bacteria population to a level that is safe for human handling and consumption, then there’s infringement (assuming the elements are met).

    If there is a dispute as to the level, then it is a question of fact for the jury to decide.

    One thing is for certain — the level does not need to be decided during the Markman phase. The standard is ascertainable and objective — not vague or ambiguous as others have argued.

    What may be vague, however, is the actual level, and if there is a disagreement as to the level, then there is a material issue of fact, i.e., a question of fact for the jury to decide.

    In the end, the Federal Circuit and district court reached the right result but for the worng reason.

    Hat’s off to opposing counsel for obfuscating an extremely simple issue! Changing the easy, unambiguous construction of a claim into a Chef America issue was legally brilliant! Gotta love my profession! Seems that you can fool most of the people (1 trial court judge, 3 appellate court judges, and some commentators on this blog) all of the time!

  27. So I guess you want every claim to be held invalid if it is at all necessary to turn to intrisic evidence. So, not only should Examiners not have to read the spec, no one should have to read it. Why have a spec at all? And yeah, the spec made it clear by example what was meant, and a Phosita could readily ascertain what did and did not infringe the claim.

  28. curious: “Phosita would have common sense and would not read sanitizing to mean that it did not have to be cooked to be safely eaten”

    That’s nice. Phosita would also not read sanitizing to mean that it did not have to be inserted into the center of the sun to be safely eaten. The issue is: if the claim isn’t to be interpreted literally (because that would be offensive to some people, notwithstanding Chef America), does it have a definite meaning? If so, what is it?

  29. “What was the inventor using the language of the claim to mean” is the relevant question the PHOSITA is to ask him/herself (in England, at least). In the context of chicken meat that is coming off the arse end of an industrial production line, Curious, I can well imagine the PHOSITA contemplating nothing else but meat cooked well through.

  30. MD: “You see Malcolm, I’m still arguing that, if one really wants to make sense of the CA claim, one easily can.”

    Are you arguing with me, MD? I hope not because I said the exact same thing just a few comments up.

    broje: “The meaning of the claim term can be readily appreciated by reading the specification”

    What is the fixed, definite and objectively-discernable meaning of the term “safe for consumption”, broje? I’ll save you some time: it isn’t in the specification. Nor is it incorporated by reference to some definite, fixed and objectively-discernable definition elsewhere. It is inarguably a vague, indefinite term because it’s meaning can ONLY be discerned by querying a panel of “experts” as to their memory of what level of bacteria would have been deemed be “safe for consumption” on a chicken as of the filing date.

    This is what happens when the PTO fails to do its job. And it happens all the time. But rest assured it happens far more often when the Examiner is less educated and is working in an area where the terminology grows like cancer (e.g., computer-implemented crap and business methods).

  31. Phosita would have common sense and would not read sanitizing to mean that it did not have to be cooked to be safely eaten.

  32. So, if “contacting the fowl” means “contacting even just a little bit of the fowl” why can’t the “Chef America” claim mean heating the exterior surface of the dough (at the oven temperature) to 400°F and, in one bound, render the claim in accord with the common sense of the presumed reader, the PHOSITA? You see Malcolm, I’m still arguing that, if one really wants to make sense of the CA claim, one easily can.

    Dennis, if I have to re-input my pseudonym each time, tediously, I might as well use a new one each time. Isn’t that what’s now happening?

  33. No, if you insert the definition of sanitize, it still only says “contacting the fowl for a time sufficient to achieve a bacterial population reduction to a level that is safe for human handling and consumption.” It doesn’t say contacting the entire fowl until the entire fowl is safe for human consumption.

    Failure to recite or define “contacting only the exterior of the fowl for a time sufficient to achieve a bacterial population reduction only on the exterior to a level that is safe for human consumption” does not make the opposite the correct interpretation. Every patent practitioner knows that reciting “contacting the fowl” means “contacting at least part of the fowl” absent evidence that a more narrow construction should be taken.

    I don’t think you believe your own argument. You’re just getting some thrills out of trolling. Either that, or you need to go take your meds.

  34. broje: “Ecolab’s argument that FMC’s claim was limited to sanitizing the whole chicken to the point that it did not have to be cooked in order to be safely eaten was ridiculous.”

    Except that’s what the claim says, when you insert the definition of “sanitize” provided in the specification. This is why Chef America was invoked. It’s not Ecolab’s argument that is absurd, it’s the CLAIM that is absurd. But here the judges decided to make the claim less absurd by making it hopelessly indefinite BUT at the same time ignoring the indefiniteness. Could that have been done in Chef America’s case? Of course. Humpty Dumpty is the master of the words. It would have been wrong to do so in Chef America, however, just as it was wrong to do so here.

  35. “I expressly withdraw my commendation.”

    Thanks. I wouldn’t want your commendation besmirching my good name.

  36. The meaning of the claim term can be readily appreciated by reading the specification, as it should be.

  37. broje “Are you seriously arguing that the claim should be construed to cover something (i.e., sanitizing the chicken to the point where it can safely be eaten raw by a human) that the patent does not even describe? ”

    I’m arguing that the claim is crap because it is either absurdly narrow (if properly construed) or its hopelessly ambiguous. Your incredulity should be directed to the judges in the case who appear to be satisfied by claim limitations (“safe for consumption”) that, to the extent they are not taken literally, are objectively meaningless. Might as well just put an asterix after the claim: *If you think you infringe, please provide patentee with a description of your method and the value of your company. Patentee will provide an explanation of the term in due course.

  38. “You really don’t get it do you? That whole question is completely unnecessary to ask because MM is not suggesting that what so ever.”

    I think you are the one confused about what MM is saying. Let’s ask him.

    “MM’s whole point was that the definition provided by the applicant should have screwed him in the end. And it should have.”

    But the applicant’s definition did not say that the entire chicken is made safe for consumption. There is no reason to think it means sanitizing more than the skin. Only your wishful thinking is supplying that meaning, motivated by your desperation to win this argument.

    If I understand correctly, both FMC and Ecolab were sanitizing the skin to the point a person could have picked up the fowl immediately and safely licked it. Both of their fowls had to be cooked in order to safely eat the whole chicken. The only difference I know of is that Ecolab’s solution had additional components. That’s it.

    Ecolab’s argument that FMC’s claim was limited to sanitizing the whole chicken to the point that it did not have to be cooked in order to be safely eaten was ridiculous. Your insistence on championing their lost cause is not helping your credibility. I used to think that there might be some truth to your assertion that, unlike other Examiner’s, you refrain from making ridiculous claim constructions. But this example of your capacity for unreasable construction of claims belies that assertion. It’s painfully obvious that you only think that you make good rejections.

  39. “What are you talking about? The FMC patent describes only sanitizing the skin. It would not be safe for a person to pick up a piece of chicken right then and there and eat it.”

    Ok fine, it would only be safe in so far as the skin was sanitized. Doesn’t change the discussion one bit. We are not discussing “safe to consume as a whole” we are discussing bacteria levels (apparently, according to your interpretation only on the surface of the skin) which do not cause a person to get sick, and the reduction of said bacteria levels to such a level.

    “Ecolab claimed that their chicken still has to be cooked. ”

    becomes

    “Ecolab claimed that their chicken still has to be cooked… to be sanitized”. (I’ve been arguing this the whole time. Specifically, that Ecolab should have been more broad in their assertion of what they don’t do, rather than being so specific to conflate the issue down to “safe for human consumption” which is then taken out of context by the DC, where it is divorced from its true role in the sentence, specifying an amount of bacteria population known to a poshita)

    Thus, no infringement. Then,

    “Well, the chicken sanitized by the method of the FMC patent still has to be cooked too.”

    Becomes

    “Well, the chicken sanitized by the method of the FMC patent still has to be cooked too … to be totally safe for human consumption (I guess is what you’re talking about) considering many factors, bacteria inside the meat, chicken viruses, etc. in addition to the bacteria level on the skin”

    Your interpretation of the term sanitized is precisely what Ecolab argued. The definition does not say “sanitized only on the surface of the skin, and perhaps not completely sanitized on the skin, and not necessarily sanitized inside the meat at all, both of which would require cooking” or something similar. There is nothing recited in the definition about when cooking is performed or an allowance for the meat to have a certain bacteria level only after cooking. The definition unambibuously requires that x or below amount of bacteria are left on the chicken (or perhaps, reasonably, on the skin as you suppose) What it says is:

    “denote[s] a bacterial population reduction to a level that is safe for human handling and consumption”

    MM’s whole point was that the definition provided by the applicant should have screwed him in the end. And it should have. That’s what he should get for being his own lexicographer and making a narrow narrow definition. A narrow definition which may have been responsible for him getting past prior art. You are, in effect, giving him his cake (a narrow definition when we’re looking at prior art) and allowing him to eat it too (a broad definition when we look for infringement).

    And my point has been that Ecolab should have argued that they didn’t perform sanitization as specifically defined. But it doesn’t appear that they did argue that. Instead they went off on a potentially confusing tangent about “safe for human consumption”. If, indeed, they do sanitize the fowl in the manner claimed, then an argument about “safe for human consumption” would be ridiculous and wouldn’t require the court to make some special instruction to the jury.

    Seriously, I’m done with this thread. I’ll save my energy for multimillion dollar clients that need my explanation services. Don’t hesitate to call:

    1-800-exa-min6k

    btw, poshita, what is the bacteria level required to consider chicken sanitized?

    “Are you seriously arguing that the claim should be construed to cover something (i.e., sanitizing the chicken to the point where it can safely be eaten raw by a human) that the patent does not even describe? ”

    You really don’t get it do you? That whole question is completely unnecessary to ask because MM is not suggesting that what so ever. You are conflating the issue of “safe to eat” with “number of bacteria left on the fowl after dipping” and you’re doing so because of Ecolab’s poorly presented argument (or at least poorly reported argument by the Fed. circ’s reporting). The patent never comments what so ever about whether or not the person eating the chicken will get sick or not. The patent ONLY comments on the BACTERIA LEVEL (which happens to be the level at which people get sick etc.) at the specific point in time which is right after the fowl is dipped or sprayed or whatever.

  40. Why don’t you read the helpful excerpts from the FMC patent, provided so thoughtfully above by prisoner number 6, in which the patent teaches only sanitizing the exterior of the fowl. Are you seriously arguing that the claim should be construed to cover something (i.e., sanitizing the chicken to the point where it can safely be eaten raw by a human) that the patent does not even describe?

  41. “LOL. The focus of the discussion is whether the district court and Federal Circuit was wrong.”

    Whatever. You can debate that all day. At the end though, what the Fed. Cir. said is going to be final. (Well, it’s 99.99999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999% probable that the Fed. Cir. is going to have the last word.) What’s that old expression? They’re not final because they’re infallible. They’re infallible because they’re final.

    “You are correct and I commend you for locating the best (but hardly compelling) argument justifying what the court did here.”

    Thanks. But I wasn’t really seeking any commendation.

    “Specifically, I am referring to the cherry picking from the testimony of Ecolab’s expert.”

    So when a judge listens to expert testimony, gives that testimony its due consideration, weighs it appropriately, and renders a decision, the judge is cherry picking? Seems to me that’s what the losing side would say. Maybe you have some experience with that.

  42. broje: “Well, the chicken sanitized by the method of the FMC patent still has to be cooked too.”

    Really? Where is the “cooking” step recited in the claims?

  43. dont’ bother: “The district court didn’t think so. Neither did the Fed. Cir.”

    LOL. The focus of the discussion is whether the district court and Federal Circuit was wrong.

    db: “Expressly defined does not mean unambiguous.”

    You are correct and I commend you for locating the best (but hardly compelling) argument justifying what the court did here. Specifically, I am referring to the cherry picking from the testimony of Ecolab’s expert. The court’s logic is that if a quality control technician at a chicken rendering plant can stamp a chicken “fit for consumption” before it is cooked, then the adjective” safe for consumption” includes consumption “after cooking”.

    Again, all this was in the context of claim construction. The court was attempting to construe “sanitized” but instead it construed “safe for consumption” in a way that eviscerates the sanitizing step and, as WCG alludes to upthread, leads to a fatally indefinite claim. Nobody knows what “safe for consumption” means. The specification doesn’t define it. Is it an industry standard? Does the FDA describe the bacterial levels in a fowl that are “safe for consumption”? Are those regs incorporated by reference in the patent? Or do we need to poll 20 chicken inspectors and see what level of bacteria is deemed “safe for consumption” before we can determine if we infringe?

    “I don’t know, the patent doesn’t say exactly, for example, the patent doesn’t say when this ‘safe for consumption’ is to be determined, so how would one of ordinary skill in the art know? Maybe I need to hear some expert testimony on that.” Which the judge did.”

    And yet, after hearing the expert testimony, we still don’t know what “sanitized” except that it doesn’t really mean “safe for consumption” because nobody is eating that chicken until they cook it.

    Phosita wrote: “sanitization is not synonymous with sterilization. Mr. Mooney started off in the wrong direction.”

    I never used the word sterilize so I have no idea what you are talking about.

    First thing: “What is so complicated or controversial about the notion that any raw food of any kind may be designated as safe or unsafe for human consumption, regardless of whether cooking it prior to consumption is either necessary, desirable or entirely optional?”

    Nothing at all is complicated about “that notion.” The discussion is about the meaning of a term in a patent which cost substantial sums of money to draft and prosecute. What’s “controversial” is that in spite of all this, neither the applicant nor the PTO could be bothered to do a halfway decent job of providing the public with an objective description of the invention.

  44. “… a REDUCTION IN BACTERIA takes place such that it is sufficient to allow the human body to process it without illness right then and there (perhaps if you were standing near the assembly line and ate a piece).

    Ecolab’s process never includes such an intended use for its maintained contact with a solution. And, indeed, the Ecolab maintaining step does not appear to be capable of performing that intended use. Ecolab would not anticipate, and it does not infringe.”

    What are you talking about? The FMC patent describes only sanitizing the skin. It would not be safe for a person to pick up a piece of chicken right then and there and eat it.

    Also, the only information I have about what Ecolab was doing is what the decision said, that Ecolab claimed that their chicken still has to be cooked. Well, the chicken sanitized by the method of the FMC patent still has to be cooked too. The acid solution only sanitizes the exterior. So what are you talking about? Please explain.

  45. 2 things:

    1) I am a phosita in this area, and the point has been well-discussed already: sanitization is not synonymous with sterilization. Mr. Mooney started off in the wrong direction.

    2) Sanitized chicken tastes greatly inferior to un-sanitized chicken, even given identical growth conditions, feed, and processing. Sanitized chicken also tends to have been fed antibiotics, vs “organic”, “free-range” chicken which has not. The flavor difference is gigantic, enough in my opinion to warrant the difference in retail price. Try it!

  46. Utterly bizarre. What is so complicated or controversial about the notion that any raw food of any kind may be designated as safe or unsafe for human consumption, regardless of whether cooking it prior to consumption is either necessary, desirable or entirely optional? Or that common bleeding sense should be the starting point for construing a patent claim?

    Real World, meet Patent World. I’m sure if you look hard enough you’ll find an intersection somewhere.

  47. “The directors also say there is no restriction crisis in our TC (we can’t speak to other TC’s). ”

    Thanks for asking. It would be interesting some time to see some statistics as to the percent of applications receiving restriction/election requirement, each year for the past ten or twenty years. Dennis?

  48. “Are we reading the same case here?”

    I’m adopting the Mooney approach to posting: just spewing out whatever I feel like regardless of the facts or the decision.

    It’s liberating. You should try it.

  49. The Japanese wouldn’t let you near an izakaya Mooney, besides your ego is too big to fit through the door, and your head too empty to figure out or appreciate what is going on around you.

  50. “and they got stomped by the judge. Happens all the time. ”

    Are we reading the same case here? They didn’t get stomped by the judge, the patentee got away with murder. It would have been proper for them to be stomped. It would be proper because a certain number, i.e. 100, is no doubt the industry standard. And that is all the expert needed to say. Or maybe it’s a range 100-110, it doesn’t matter, a POSHITA would understand it to mean some number or numbers, C, or C-C’. I don’t even need to work in the chicken industry to know that, that is plain common sense.

    In any event, more important than this case is the news I bear.

    So, the directors say that we have finally made some headway on the backlog thanks to the recession. But only a very small bit. The directors also say there is no restriction crisis in our TC (we can’t speak to other TC’s). Also, we have no plans to lobby for fee setting authority (although I’m nearly 100% sure we used to do that a few years ago, so maybe these directors just don’t know about it). And finally, they say that if it should come down to laying people off then the acting undersec. has things under control and has a request prepared to get money from congress (as to if we’ll get it or not though is another question).

  51. “The definitions of ‘sanitize’ and ‘sanitization’ are expressly provided and unambiguous.”

    The district court didn’t think so. Neither did the Fed. Cir.
    See page 11, lines about 1-5, of the decision.

    “The term in the claim has been defined in the patent.”

    So what? If the definition doesn’t help one of ordinary skill to understand what the claim actually covers, the definition ain’t worth a hill o’ beans.

    “Now, you want to construe not the term in the claim, but a term in the construction of a term in the claim. I disagree.”

    You’re free to disagree. So was the accused infringer. The court was free to ignore your disagreement. And the accused infringer’s disagreement. Which the court did.

    “There is no dispute as to what ‘sanitize’ and ‘sanitization’ mean.”

    Uhm, yes there was. Kinda what the case was about actually.

    I think the moral of this story is: you can’t make a claim term “unambiguous” simply by “expressly defining” it in the spec. If your “express definition” is gobbledygook, it’s gobbledygook. You’re not gonna save your claim by going, “But, but, but your honor, we EXPRESSLY DEFINED what it means in our spec!!!!”

    Expressly defined does not mean unambiguous. No matter how much you want it to.

    You are correct that it is the province of the jury to decide, as a matter of fact, whether the accused process infringes. But they can’t do that until they understand what is covered by “safe for…consumption.” And they can’t understand what “safe for…consumption” covers until the judge, as a matter of law, construes the claim. Now I assume the judge actually read the spec (which is more than I can say for many) and thought “What the heck does ‘safe for…consumption’ mean to one of ordinary skill? Gee, I don’t know, the patent doesn’t say exactly, for example, the patent doesn’t say when this ‘safe for consumption’ is to be determined, so how would one of ordinary skill in the art know? Maybe I need to hear some expert testimony on that.” Which the judge did. And the Feds said, “We agree with what the judge did.”

    Nothing new here. If the patentee wanted “sanitize” to mean, for example, below a 100 units, they should have “expressly defined” it that way. Instead, they gave it some fuzzy “express definition”, probably in the hopes of catching some competitor in a net of varying size, depending on the facts, and they got stomped by the judge. Happens all the time.

    The patentee should consider it a lesson learned. So should the attorney who drafted the spec and claims.

    That’s why we call this practice.

  52. Taking a quick look to the patent (sorry no link, dang spamfilter).

    “Typically, sanitization occurs substantially instantaneously at the peracetic acid concentrations described here. Thus, rapidly spraying the peracetic acid solution onto the bird, or quickly and momentarily dipping the bird into a container of peracetic acid solution will sanitize the bird. However, because of the many internal and external surfaces of the bird, application of the peracetic acid by dipping or spraying may not lead to immediate contact at all surface points, and the actual application time may be more protracted. Thus, the routine bacteriological tests that are conducted on processed fowl may suggest an actual application time equal to or greater than 0.5, 1, 5, 10, or 15 minutes, or an increase in peracetic acid concentration or that other efforts be taken to ensure a more complete contact of the peracetic acid with the fowl. That contact is at the surface(s) of the fowl.”

    Saying that sanitization occurs in a snap, but in the real world, you’re going to need some time.

    “Since peracetic acid rapidly reacts with any organic matter that may be present, such as blood, feces, and bacteria, it decomposes rapidly after it has been applied to the surface of the fowl. Thus, it is important to remember that the sanitization process used in fowl processing is not designed to kill 100% of the pathogens. It is designed to reduce the bacterial population to a level that the human body can process to prevent illness and disease symptoms. Consequently, the peracetic acid treated fowl should be kept at reduced temperatures to retard bacterial growth. ”

    which tells us that this stuff doesn’t kill 100%, but just kills enough to reduce the bacteria to a level where humans can handle and eat, i.e. “process” the fowl to prevent illness. And, that after you’ve reached that level, you need to keep the stuff refrigerated or the bacteria will just grow back.

    Example 1, uses 1 minute of dipping. The rest of the examples all use some finite time to santize the fowl to a level of bacteria where the human body can process it without illness.

    In the end you can boil this claim down, for our purposes, to:

    A method for sanitizing fowl comprising:
    contacting the fowl with a solution,
    maintaining that contact for a time sufficient to sanitize the fowl.

    Where the time is presumed to be nonzero (see spec) and the sanitization is sanitization where a REDUCTION IN BACTERIA takes place such that it is sufficient to allow the human body to process it without illness right then and there (perhaps if you were standing near the assembly line and ate a piece).

    Ecolab’s process never includes such an intended use for its maintained contact with a solution. And, indeed, the Ecolab maintaining step does not appear to be capable of performing that intended use. Ecolab would not anticipate, and it does not infringe.

    That’s it. End of discussion for me. You’re welcome to look the claim and patent over more if you like but it is a pretty cut and dry method claim that has an intended use for its maintaining step. The Ecolab maintaining step simply is not capable of performing that intended use. The other constructions ignoring the intended use’s impact on the claim are mistaken. Keyword here is “to”.

    Also, WCG is right.

    As an aside, this is yet just one more reason to get rid of intended use limitations in patents. They should have been exorcised from the system long ago what with all the nonsense that surrounds them.

    Tttttthhhhat’s all folks!

  53. “of the patent explains that the sanitization process is not designed to kill 100% of the bacteria, and that the fowl still has to be kept chilled during shipping.”

    I agree.

    “It seems like a ridiculous feat of mental acrobatics to attempt to claim that the solution must be applied until the fowl can be eaten raw. ”

    “can be eaten” is not synonymous with “having a level of bacterial population that is safe for human handling and consumption.

    After reviewing the decision it appears that there is substantial conflation of such terms.

  54. “of the patent explains that the sanitization process is not designed to kill 100% of the bacteria, and that the fowl still has to be kept chilled during shipping.”

    I agree.

    “It seems like a ridiculous feat of mental acrobatics to attempt to claim that the solution must be applied until the fowl can be eaten raw. ”

    “can be eaten” is not synonymous with “having a level of bacterial population that is safe for human handling and consumption.

    After reviewing the decision it appears that there is substantial conflation of such terms.

    For example:

    “Surely, the inspectors do not require the poultry to be “fit for human consumption” in its uncooked state.”

    Is from the decision. That crack is certainly misleading because while the inspectors might or might not require what they speak about, inspectors certainly might require that bacteria levels be safe for human HANDLING and consumption.

    “Thus, Chef America is distinguishable, and the district court did not err when it construed the term “sanitize” to mean that the treated meat has become safe for human handling and post-cooking consumption.”

    Ridiculous. Although Chef America may none the less be distinguishable on other grounds.

    Here is the patent for those interested.

    link to google.com

    From the abstract:

    “A method for sanitizing a fowl that has been defeathered and eviscerated by contacting the fowl with peracetic acid solution containing from 100 to 2000 ppm peracetic acid. Completely contacting the fowl with peracetic acid solution effectively reduces the bacterial level found on the fowl to a level that whill not produce disease in human beings”.

    Even the abstract supports my position.

    Moving on down.

    “Typically, sanitization occurs substantially instantaneously at the peracetic acid concentrations described here. Thus, rapidly spraying the peracetic acid solution onto the bird, or quickly and momentarily dipping the bird into a container of peracetic acid solution will sanitize the bird. However, because of the many internal and external surfaces of the bird, application of the peracetic acid by dipping or spraying may not lead to immediate contact at all surface points, and the actual application time may be more protracted. Thus, the routine bacteriological tests that are conducted on processed fowl may suggest an actual application time equal to or greater than 0.5, 1, 5, 10, or 15 minutes, or an increase in peracetic acid concentration or that other efforts be taken to ensure a more complete contact of the peracetic acid with the fowl. That contact is at the surface(s) of the fowl.”

    Saying that sanitization occurs in a snap, but in the real world, you’re going to need some time.

    “Since peracetic acid rapidly reacts with any organic matter that may be present, such as blood, feces, and bacteria, it decomposes rapidly after it has been applied to the surface of the fowl. Thus, it is important to remember that the sanitization process used in fowl processing is not designed to kill 100% of the pathogens. It is designed to reduce the bacterial population to a level that the human body can process to prevent illness and disease symptoms. Consequently, the peracetic acid treated fowl should be kept at reduced temperatures to retard bacterial growth. ”

    which tells us that this stuff doesn’t kill 100%, but just kills enough to reduce the bacteria to a level where humans can handle and eat, i.e. “process” the fowl to prevent illness. And, that after you’ve reached that level, you need to keep the stuff refrigerated or the bacteria will just grow back.

    Example 1, uses 1 minute of dipping. The rest of the examples all use some finite time to santize the fowl to a level of bacteria where the human body can process it without illness.

    In the end you can boil this claim down, for our purposes, to:

    A method for sanitizing fowl comprising:
    contacting the fowl with a solution,
    maintaining that contact for a time sufficient to sanitize the fowl.

    Where the time is presumed to be nonzero (see spec) and the sanitization is sanitization where a REDUCTION IN BACTERIA takes place such that it is sufficient to allow the human body to process it without illness right then and there (perhaps if you were standing near the assembly line and ate a piece).

    Ecolab’s process never includes such an intended use for its maintained contact with a solution. And, indeed, the Ecolab maintaining step does not appear to be capable of performing that intended use. Ecolab would not anticipate, and it does not infringe.

    That’s it. End of discussion for me. You’re welcome to look the claim and patent over more if you like but it is a pretty cut and dry method claim that has an intended use for its maintaining step. The Ecolab maintaining step simply is not capable of performing that intended use. The other constructions ignoring the intended use’s impact on the claim are mistaken. Keyword here is “to”.

    Tttttthhhhat’s all folks!

  55. Here’s the language cut-and-pasted from the spec of the actual patent:

    “b) The terms “sanitize” and “sanitization” denote a bacterial population reduction to a level that is safe for human handling and consumption.”

    The definitions of “sanitize” and “sanitization” are expressly provided and unambiguous. Thus, the court cannot go outside the patent to an expert under Philips during the Markman phase. Also, there is an objective standard for a fact finder to ascertain infringement or no infringement.

    The term in the claim has been defined in the patent. Now, you want to construe not the term in the claim, but a term in the construction of a term in the claim. I disagree. There is no dispute as to what “”sanitize” and “sanitization” mean.

    It would be a question of fact as to whether the alleged infringing product reduced the bacterial population to a level fit for human consumption.

    Here’s a simplistic example using two hypothetical products to show you how the unambiguous construction would be used at trial:

    LAWYER: Is there a level of a bacterial popluation which is fit for human consumption?

    EXPERT: Yes.

    LAWYER: What is that level?

    EXPERT: 100 units.

    LAWYER: A level above 100 units is a level not fit for human consumption?

    EXPERT: Yes.

    LAWYER: To what level does the alleged product 1 reduce the bacteria population?

    EXPERT: 90 units.

    LAWYER: And 90 units is a level of which the bacteria population is fit for human consumption?

    EXPERT: Yes.

    LAWYER: And now for product 2. To what level does the alleged product 2 reduce the bacteria population?

    EXPERT: 110 units.

    LAWYER: And is 110 units a level of which the bacteria population is fit for human consumption?

    EXPERT: No.

    Outcome: Product 1 infringes the claim, and product 2 does not.

  56. col. 3, lines 48-57 of the patent explains that the sanitization process is not designed to kill 100% of the bacteria, and that the fowl still has to be kept chilled during shipping. I think a PHOSITA would know that the chilled, uncooked fowl has had its bacteria reduced to the point hat it is designated safe for human consumption upon be cooked. It seems like a ridiculous feat of mental acrobatics to attempt to claim that the solution must be applied until the fowl can be eaten raw. As the expert testified, that is not what the patentee was doing, and I don’t think any PHOSITA would have thought that is what the specification taught or that the claim meant.

  57. “I would agree with you that an expert may need to be employed, but not during the Markman phase.”

    Why not? Claim construction is a question of law to be decided by the court. If the spec did not provide unambiguous meaning to “safe for…consumption” (and indeed, didn’t even specify if “safe for…consumption” was to be determined in-plant, on the store shelf, after cooking, etc.), why shouldn’t the court listen to expert testimony as to what one of ordinary skill in the art would understand “safe for…consumption” to mean?

    “It becomes a question of fact for the jury during trial: whether or not the alleged infringing product performed a method for reducing the bacteria population of fowl that has been killed, plucked and eviscerated to a level that is safe for human handling and consumption [as specified by the elements]?”

    Infringement is a question of fact. But it’s a question of fact as to whether a claim that has been properly construed as a matter of law is infringed.

  58. “…a pre-appeal decision goes out (dated 01/2009) what is the date when it becomes proper to withdraw the case from appeal and abandon it? I.e. when is the applicant’s drop dead date? It seems like they can buy up to an additional 7 mo., is that correct?”

    The appeal brief would be due one month from your 01/2009 mail date (without extension). The applicant would be able to extend for 5 months. So 07/2009.

  59. JAOI,

    I’m sorry to hear that.

    I love reading stories of litigator foibles. One of my favorites was for a patent for pet food. The accused infringer’s expert took the stand and announced with much conviction, “The patent is clearly anticipated by this text book.” The patentee’s attorney asked the expert to point to the particular passage that anticipated the claim. “Well, uhm, ah, well, you see, I’m not quite certain that it’s any passage in particular,” the expert stammered. The patentee’s attorney asked if the expert could maybe narrow it down to a particular chapter. “Uhm, no.” the expert answered.

    Classic.

    My other favorite was reading the transcript from the Amazon v. Barnes&Noble case over the “one click” patent. BN’s expert testified that Amazon’s one click patent would have been obvious over a text book that the expert had written (how convenient!) in view of the well known use of cookies. Amazon’s attorney asked BN’s expert, “Did you ever think of using cookies in that way?” BN’s expert replied, “No.”

  60. I actually had the pleasure of working in a poultry processing plant in my former life as an industrial engineer. It’s an incredible process. 80 birds per minute processed in a single line. Far cleaner and more sanitary than any industrial or even medical facility that I’ve been in.

  61. “So imagine it has another step of first cooking the fowl. ”

    I assume you mean by cooking the foul that you mean “cooking the foul until it is sanitary”. Doing that renders the entire last limitation of the claim meaningless.

    The first 3 of your 4 hypo deps are fine for either person’s point of view.

    I refuse to consider the 4th hypo dependent because you are attempting to use it to inflict doctrine of claim differentiation where there was none irl.

    “The sanitizing method, because of the word “comprising,” is not limited to relying on only the step of contacting the solution in order to achieve the sanitization. ”

    Then the entire limitation “and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl” gets read completely out of the claim because that time of maintaining could just as well be 0. I would be willing to bet there is a good chance that there is probably prior art that would take the claim down in that instance. And, that is some “examiner interpreting” if I ever saw it.

    At least the spectators who were confused about how a limitation can be read out of a claim now see how it is done.

    Let’s take a quick look at what the claim would look like with your suggested additions.

    ” method for sanitizing fowl that has been killed, plucked and eviscerated, comprising: cooking the fowl, contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid . . . and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl”

    or

    ” method for sanitizing fowl that has been killed, plucked and eviscerated, comprising: cooking the fowl enough to sanitize it, contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid . . . and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl”

    In either situation you still wouldn’t have infringment. See, that’s a major hangup about sticking limitations into method claims where the magic word comprising comes into play, just in order to make a point. If you make an addition to prove a point about claim construction you often change the whole claim, along with what anticipates and infringes. Without your addition of the cooking step in front, there is no reason to construe the claim so broadly that the entire last limitation is rendered moot, and with your addition you have no infringment. The claim should not be reasonably construed in such a manner.

    You are, in effect, using the breadth of one portion of the claim to render an entire other portion of the claim meaningless. It is those kind of interpretations that would get you a big fat “reopen this case” from an appeals specialist. That is, unless something in the spec supported you doing so. And I really doubt it did so in this case.

    In any event, anyone have an answer as to the PABC question I put forward above?

  62. Can we not just do this the EPO way? Because of its lack of clarity, the claim in suit is self-evidently wide enough to embrace within its ambit something that is not new. End of story.

    Being robust and adult about these things does save a lot of time. And accords with reality. One is reminded of an English House of Lords (supreme court) decision about the talent patent lawyers have to split hairs, and that being something which, unfortunately, their training encourages them to indulge. It was Lord Denning in Catnic, I think, from about 30 years ago, before the European Patent Convention even got started.

  63. don’t bother,

    I would agree with you that an expert may need to be employed, but not during the Markman phase.

    It becomes a question of fact for the jury during trial: whether or not the alleged infringing product performed a method for reducing the bacteria population of fowl that has been killed, plucked and eviscerated to a level that is safe for human handling and consumption [as specified by the elements]?

    If the

  64. “The definition of “sanitize” included that the poultry was “safe for handling and consumption” after contact with the solution The issue was: what does “safe for consumption” mean?”

    No, the issue isn’t whether the “poultry” that was “safe for handling and consumption.” The issue involves the level of bacteria. “Safe for handling” is the level or measure to which the bacteria population has to be reduced.

    This isn’t ambiguous.

  65. “That is one possible interpretation although probably not a very good one ivo the spec and preamble. Especially since the claim itself starts out by saying that it is a method of sanitizing, which makes you understand that the foul is, at the beginning of the process, unsanitary.”

    Yes, the methos is a method of sanitizing, but it has that lovely word “comprising” in it. So imagine it has another step of first cooking the fowl. Now imagine, instead, that it has 4 dependent claims that specify contacting the solution before, during, or after cooking, or in the absence of cooking. The sanitizing method, because of the word “comprising,” is not limited to relying on only the step of contacting the solution in order to achieve the sanitization. It can be done, before, during, or after cooking or in the absence of cooking.

  66. “Not really. Malcolm has screamed that “STILL NEEDED TO COOK THE CHICKEN.”"

    MM talking about still needing to cook the chicken was merely his way of saying that the accused infringing chicken (used in the accused infringing method) wasn’t santized, and thus needed some kind of other processing (i.e. cooking) to make it sanitized. Yours and mine “correct” interpretation reads several implied limitations (that the fowl is not sanitized at the beg. and that it becomes sanitized by exposure to the compound) completely out of the claim in a much more blatant way than I personally try to do in my day to day. I’m pretty sure that those are the kinds of interpretations that I get jumped on for making.

    In any event, can anyone tell me an obscure point on pre-appeal conference procedure? The question is, if someone sends in a pre-appeal (dated 09/2008) in re a final (dated 05/2008) and a pre-appeal decision goes out (dated 01/2009) what is the date when it becomes proper to withdraw the case from appeal and abandon it? I.e. when is the applicant’s drop dead date? It seems like they can buy up to an additional 7 mo., is that correct?

    As an aside, I love how applicants can withhold my second count “payment” for essentially 2 years. Not. Pre-appeals shouldn’t stop the clock. Or else they should only give you another 3 mo (max, 1 mo standard without buying more) or something to respond.

  67. I don’t think I need to reconcile Philips. The definition of “sanitize” included that the poultry was “safe for handling and consumption” after contact with the solution The issue was: what does “safe for consumption” mean? And in particular, what does it mean to one of ordinary skill in the art reading the patent? If the meaning of “safe for… consumption” could not be obtained from the intrinsic evidence (i.e. the spec), it was perfectfly acceptable for the district court to look to extrinsic evidence (e.g. expert testimony), which the court did.

    Am I the only one who actually read the decision? :-)

    “… and as far as I can tell, ‘sanitize’ was given an unambiguous meaning by the applicant/patentee.”

    Clearly it wasn’t given an unambiguous meaning because it was unclear what “safe for…consumption” meant. The extrinsic evidence (again, the accused infringer’s expert’s admission) tended to show that “safe for…consumption” was something that was to be determined during in-plant inspections, and did not mean safe for consumption after cooking.

  68. “Simply because the term “sanitize” is “expressly defined” in the spec does not mean that the term cannot be ambiguous.”

    How do you reconcile Philips where the extrinsic evidence (e.g., common skilled in the art meanings, dictionary meanings, expert testimony) is not to be considered if the meaning is obtained from the intrinsic evidence (e.g., spec)?

    Here, ambiguity may be created by looking outside of the spec, but it should never get that far if the spec provides the meaning through an “express definition.” The court should never have gone outside of the spec unless there was an ambiguity within the intrinsic evidence, and as far as I can tell, “sanitize” was given an unambiguous meaning by the applicant/patentee.

    I invite you to reconcile Philips.

  69. Hi don’t bother,

    That’s what happened in my first, 1980, patent case at trial!

  70. “The term ‘sanitize’ is expressly defined in the spec as ‘denote[s] a bacterial population reduction to a level that is safe for human handling and consumption.’”

    Simply because the term “sanitize” is “expressly defined” in the spec does not mean that the term cannot be ambiguous.

    The issue is still: what would one of ordinary skill in the art understand “safe for…consumption” to mean?

    The district court heard expert testimony. The accused infringer’s expert admitted that in-plant inspectors determine whether the poultry is, in its uncooked state, safe for consumption. In other words, the accused infringer’s own expert testimony supported the patentee’s proffered construction.

    Nothing remarkable here. Well, nothing remarkable expect the rather poor preparation of the accused infringer’s expert.

    I thought litigators were much better lawyers than prosecutors.

    Not really true I guess.

  71. “And, that does seem to support MM’s interpretation.”

    Not really. Malcolm has screamed that “STILL NEEDED TO COOK THE CHICKEN.”

    As you and I have correctly construed the claim to indicate a level of the bacteria population, there is no need to add the “cooking” limitation.

  72. Pardon me, the time period required would not be 0 seconds. It would be .00000000000000001 seconds. Make contact, but you don’t have to maintain it at all, according to your interpretation. The entire limitation going to the keeping the contact going is read entirely out of the claim.

    In fact, it would probably be you that would “make a good examiner”.

  73. broje “I hope that you do not write clearance opinions for a living. Your compulsion to construe claims in the light least favorable to the patentee will not serve you well in that capacity.”

    Like any skilled attorney, I can swing either way if you pay me enough.

  74. WCG, you somehow “forgot” that the claim requires a step of contacting with the 100 ppm acid solution “for a time sufficient to [render the fowl safe for consumption]…”

    The infringer’s method does not include such a step.

    Ergo, no infringement.

    That’s what I’m saying. Alternatively, if all the claim requires is that the level of bacteria is reduced relative to an untreated chicken, then it seems frickin obvious as all get out, if not anticipated.

  75. “It merely requires that at least part of the fowl be contacted with the solution for a time sufficient to achieve that condition, regardless of whether it was sanitary to start with. ”

    That is one possible interpretation although probably not a very good one ivo the spec and preamble. Especially since the claim itself starts out by saying that it is a method of sanitizing, which makes you understand that the foul is, at the beginning of the process, unsanitary.

    However, even giving you that interpretation, it does not appear that the accused method does in fact hold the solution in contact with the foul for such a time period. Furthermore, how does one determine what that time period is (look in the spec for some time periods?) if one does not determine it based on whether or not the foul is in fact sanitary at the end of the process? Note here that this determination can be made irrespective of whether or not the chicken was sanitary before the solution was brought into contact. However, the entire limitation would be rendered meaningless if we considered the situation where the fowl was already sanitized, the “time” that one would need to hold the solution in contact with the bird would be 0 seconds. I’m pretty sure I can find a santized fowl which is never touched by this particular solution, which is still sanitized a minute or so after I first started the method that would be prior art city.

    That said, the actual way to rewrite the claim using a substitution is thus:

    “A method for [reducing the bacteria population to a level that is safe for human consumption in a] fowl that has been killed, plucked and eviscerated, comprising contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid . . . and maintaining that contact for a time sufficient to [reduce the bacteria population to a level that is safe for human consumption in] the fowl without adversely affecting the fowl”

    It seems to me like. And, that does seem to support MM’s interpretation.

  76. Malcolm, I hope that you do not write clearance opinions for a living. Your compulsion to construe claims in the light least favorable to the patentee will not serve you well in that capacity. That said, you’d fit right in at the PTO.

  77. broje “Giving the claim, on its face, the broadest possible interpretation, the claim, on its face, is to contacting at least part of the fowl, whether sanitary or unsanitary, with the solution for a time that would be sufficient to sanitize that part of the fowl in the event that it turned out to be unsanitary.”

    Interesting how the “broadest possible interpretation” of the claim includes a bunch of limitations that render the claim far less absurd and meaningless than its plain language, yet somehow still manage to cover the accused infringer’s method. Nice. That’s exactly what the Federal Circuit did. Please put your “interpretation” back where you found it. Then wash your hands.

    “Notice it does not say whether the fowl … is already sanitary.”

    This also is appallingly dishonest. Thanks for not even trying.

  78. Dear Malcolm,

    Please give it up. Go try some raw chicken breasts — you never know, you might like it.

    We’re dying to know firsthand from you, a most objective reliable source, how tasty is raw chicken breast compared to, say, chicken brain, or live uncooked beating chicken heart — the guy on bizarre foods, as I recall, says they are quite tasty.

  79. Dear Malcolm,

    Please give it up. Go try some raw chicken breasts — you never know, you might like it.

  80. “To summarize again: the claimed method requires, on its face, that the chicken be contacted with the solution until it is safe for consumption.”

    No, it doesn’t!

    The claimed method requires, on its face, that the chicken be contacted with the solution until it reaches a bacteria level that is safe for human consumption.

    See my previous reply to you.

  81. The claim on it’s face: “contacting the fowl with an aqueous peracetic acid solution … and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl.”

    Notice it does not say whether the fowl has previously been cooked, nor whether it is already sanitary. Nor does it say contacting the entirety of the fowl, or for a time sufficient to sanitize the entirety of the fowl.

    Giving the claim, on its face, the broadest possible interpretation, the claim, on its face, is to contacting at least part of the fowl, whether sanitary or unsanitary, with the solution for a time that would be sufficient to sanitize that part of the fowl in the event that it turned out to be unsanitary.

    You want to construe it more narrowly on the basis of the intrinsic evidence that is the explicit defintion of the word sanitize. But that definition does not specify pre-cooked or post-cooked. It is possible for a previously cooked fowl to become unsanitary.

    So, to sum up, the claim, on its face, does not require that the chicken be contacted with the solution until it is safe for consumption. It merely requires that at least part of the fowl be contacted with the solution for a time sufficient to achieve that condition, regardless of whether it was sanitary to start with.

  82. Malcolm,

    There is no need for “cooking” to be added.

    Here’s the claim:

    “A method for sanitizing fowl that has been killed, plucked and eviscerated, comprising contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid . . . and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl.”

    Here’s what “sanitize” is expressly defined in the spec to means:

    “denote[s] a bacterial population reduction to a level that is safe for human handling and consumption.”

    “Sanitize” goes to directly the measure of bacteria population. How is bacteria measured? When it is reduced to the level safe for human consumption. There is no need to interject a “cooking” element.

    Rewriting the claim:

    “A method for [reducing the bacteria population of] fowl that has been killed, plucked and eviscerated [to a level that is safe for human handling and consumption], comprising contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid . . . and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl.”

    Pretty simple.

    If you disagree with my simple substitution, how would you write the claim to mean what you think it means?

  83. On that 4th prong, has anyone ever argued its in the public’s best interest to maintain a strong patent system, e.g., to prevent others from making/using/selling? That 4th prong should be slam dunk.

    Chicken brain is tasty.

  84. broje “If the enablingly disclosed method sanitizes the chicken so that it is safe for pre-cooking handling and post-cooking consumption”

    Focus on the invention that was CLAIMED, bro’. It is a method for sanitizing a chicken, where sanitizing is defined (**expressly** and very stupidly) to mean “safe for consumption”. If additional steps are required to achieve the goal, then they should have been recited. Pretending that the claim does not require pre-cooking sanitization results in the evisceration of the “sanitizing” claim term. That is the wrong result.

    To summarize again: the claimed method requires, on its face, that the chicken be contacted with the solution until it is safe for consumption.

    The infringer does NOT contact its chicken with a solution until the chicken is safe for consumption. Thus, the CLAIMED method is not infringed. End of analysis.

    It’s actually that simple, or should be. But the courts here felt obliged to attempt to save this poorly drafted claim. Why? Nobody knows. Maybe Ecolab’s claims were just as poorly drafted.

    I note, by the way, that the inherent element in the claim that causes some to be confused is, once again, a limitation concerning *time*. This problem is pervasive and can trap the unwary.

  85. Indeed MM’s assessment appears to be correct. I ha te it when the authoritative bodies do this kind of nonsense to save the claim.

    To bring up the situation from the other day, I could have had the appeals specialist admit, at the outset of the discussion that a certain part of the product in the reference was formed to meet certain conditions. Then, we could turn right around and look at the claim, and have him say that the reference doesn’t meet those terms because of, well, nothing. No construction of the claim, no ambiguity, nothing. Claim construction at the upper level bodies is more screwy than they let on.

    Specifically, they construe claims by “what the applicant wanted it to mean” (similar to what was done in the instant case where they construed it to mean what the patentee “wanted it to mean”) even if there is no possible way to express in claim language what they “wanted it to mean” without at least adding new matter, while at other times it is a possibly there simply was no way to express it period.

    It is all absurd. Phillips or whatever needs to be rewritten to bar the determination of “what the patentee/applicant “wanted it to mean”" from being the no. 1 way to construe a claim. What someone wants a claim to mean, and what the claim means (ivo the spec etc.) are two often very different things and the former should never be the correct interpretation.

    Oh, and broje, I don’t think MM is construing it to mean any sort of thing having to do with “pre-cooking” what he is construing it to mean is a construction where any actually infringing method has to make the chicken safe for consumption. The patentee himself admits that the accused infringers method DOES NOT DO THIS. That is, a claimed element is not met by the accused infringing method. Thus, the method does not infringe.

  86. Indeed MM’s assessment appears to be correct. I hate it when the authoritative bodies do this kind of nonsense to save the claim.

    To bring up the situation from the other day, I could have had the appeals specialist admit, at the outset of the discussion that a certain part of the product in the reference was formed to meet certain conditions. Then, we could turn right around and look at the claim, and have him say that the reference doesn’t meet those terms because of, well, nothing. No construction of the claim, no ambiguity, nothing. Claim construction at the upper level bodies is more screwy than they let on.

    Specifically, they construe claims by “what the applicant wanted it to mean” (similar to what was done in the instant case where they construed it to mean what the patentee “wanted it to mean”) even if there is no possible way to express in claim language what they “wanted it to mean” without at least adding new matter, and other times it is a possibly there simply was no way to express it period.

    It is all absurd, phillips or whatever needs to be rewritten to bar the determination of “what the patentee/applicant “wanted it to mean”" from being the no. 1 way to construe a claim. What someone wants a claim to mean, and what the claim means (ivo the spec etc.) are two often very different things and the former should never be the correct interpretation.

    Oh, and broje, I don’t think MM is construing it to mean any sort of thing having to do with “pre-cooking” what he is construing it to mean is a construction where any actually infringing method has to make the chicken safe for consumption. The patentee himself admits that the accused infringers method DOES NOT DO THIS. That is, a claimed element is not met by the accused infringing method. Thus, the method does not infringe.

  87. Wow, you really can’t see the forest for the trees. If the enablingly disclosed method sanitizes the chicken so that it is safe for pre-cooking handling and post-cooking consumption, then the definition set forth should not be construed to mean “pre-cooking consumption” unless it explicitly states “pre-cooking consumption.” And the claim language must be interpreted in the same way, based on the intrinsic evidence. The claim language does not say “pre-cooking consumption.” Case closed.

  88. broje: “Absent circumstances that would prevent it, it seems to me that the statement should be construed broadly enough to mean either pre-cooking consumption or post-cooking consumption.”

    If the claim covers “safe for consumption after cooking”, then the meaning of the recited claim term “sanitize” has been eviscerated, along with the chickens. The entire point of the method — AS CLAIMED, mind you — is to render the chicken safe for consumption. Period.

    The point being here that you and the Federal Circuit are *introducing* the ambiguity in order to resolve it and thereby save the claim. A claimed method that expressly (by virtue of the recitation of an expressly-defined term) purports to render a “killed plucked and eviscerated” chicken safe for consumption should not be “saved” by introducing steps that are, in fact, necessary to render that chicken safe for consumption. It’s simply a poorly drafted claim, just as the claim in Chef America was poorly drafted. But here the Federal Circuit pretends that the claim doesn’t mean what it says. The real distinction between this case and Chef America is not “ambiguity”. It’s that Chef America’s claim was unambiguously narrow on its face (it’s wording covered only the absurd embodiment, not both and absurd embodiment and a viable one), while the claim at issue here is unambiguously narrow only when the definition of a term from the specification is properly incorporated. And so the Federal Circuit refuses to incorporate the term.

    JAOI: “I don’t think the issue is which part of the chicken is or isn’t cooked.”

    I don’t either. According to the claim, all parts of the “killed, plucked and eviscerated” chicken must be “safe for consumption” or the method isn’t infringed. By their own admission, the infringer’s method does NOT render the chicken “safe for consumption.” It needs to be cooked before it is safe for consumption. Apparently the Federal Circuit does not accept the infringer’s admission. I wonder if any of the judges that heard this case would be willing to let their children eat a chicken treated according to Ecolab’s method.

  89. Dear Malcolm,

    I wonder if one can be served a beating chicken heart or fresh uncooked liver or other organ at a Japaneses izakaya drinking spot.

    However, I don’t think the issue is which part of the chicken is or isn’t cooked. I think that’s what you might call a strawman if someone else said it.

    Moreover, nobody I know of eats the head of the chicken whether it is raw or cooked. Would you think that might hold true in a Japaneses izakaya?

  90. “The term ‘sanitize’ is expressly defined in the spec as ‘denote[s] a bacterial population reduction to a level that is safe for human handling and consumption.’”

    MM, I don’t know why you interpret that statement to mean “safe for human handling and pre-cooking consumption.” That construction seems unreasonable to me because the definition does not explicitly state “precooking consumption.” Absent circumstances that would prevent it, it seems to me that the statement should be construed broadly enough to mean either pre-cooking consumption or post-cooking consumption.

    I haven’t reviewed the facts of the case, but imagine that the solution that is enablingly disclosed does not, in fact, render the chicken safe for pre-cooking consumption. If I am right, then construing the claims in that way would construe them to cover an embodiment not disclosed in the sepcification, and it would be unreasonable to think that a PHOSITA, upon readign the specification and the claims, would be led to constue it that way.

  91. I have not been to a Japaneses izakaya, but I assume that the raw chicken that is consumed there is a breast filet of some sort and not a whole chicken that has merely been “killed, plucked and eviscerated.”

  92. Town hall meeting with the directors in 2 hours. If you have something you want addressed besides the “huge” amount of restrictions let me know. There was something else someone had stated they wanted me to ask about but I forgot what it was.

  93. Patent Schmatent – They can’t stop us, and the most they can get after a lengthy and costly litigation will be reasonable royalties – we’ve got this 15k opinion (cheap insurance!) that says we don’t infringe because the patent is invalid over a dozen or so art docs based on a KSR analysis – go ahead and make it!

  94. Here’s to the improving Patently-O format — 2 thoughts:
    Why did the image appear in my preview?
    Please make the moniker & email address pop in as it did before.

    Chickens!, reminds me of farmer Jones. Tell me if you heard this story and I’ll stop:
    One day, farmer Jones was in town picking up supplies. He stopped by the hardware store and picked up a bucket and an anvil, then stopped by the livestock dealer to buy a couple of chickens and a goose.
    Now he had a problem: how to carry all of his purchases home. The livestock dealer said, “Why don’t you put the anvil in the bucket, carry the bucket in one hand, put a chicken under each arm and carry the goose in your other hand?”
    “Hey, thanks!” the farmer said, and off he went.
    While walking he met a fair young lady with a beautiful figure. She told him she was lost, and asked, “Can you tell me how to get to 15 Maiden Lane?”
    The farmer said, “Well, as a matter of fact, I’m going to visit my brother at 16 Maiden Lane. Let’s take a short cut and go down this alley. We’ll save half the time to get there.”
    The fair young lady said, “How do I know that when we get in to the alley you won’t hold me against the wall, pull up my skirt, and ravish me?”
    The farmer said, “I am carrying a bucket, an anvil, two chickens, and a goose. How in the world could I possibly hold you up against the wall and do that?”
    The young lady said, “Set the goose down, put the bucket over the goose, put the anvil on top of the bucket, and I’ll hold the chickens.”

  95. “Ecolab tried to get everyone to laugh along, but failed.”

    Replace “Ecolab” with “Mooney.” Now THAT is funny.

  96. Here in Japan, raw chicken is a regular offering in the better kinds of izakaya (sort of pub-style restaurants).

    Just saying…

    Cheers, Luke

  97. I appreciate that we are supposed to discuss Ebay factors but, nevertheless, I do hope we get a good run of comments on “sanitize”. It will make a change from the endless argument over here, about whether “technical” is clear enough.

    The lack of clarity stems not from the word “sanitize” but from the words “sufficient”, “safe” and “consumption”. Some people “consume” undercooked chicken. Some people are more susceptible to E. coli than others.

    I’m glad to see Chef America cited. As I have argued on previous occasions, a reader of the Chef claim, applying for example the EPO “Principle of Synthetical Propensity” easily gets to a clear, common sense and real life construction of the claim, that leaves it valid and infringed. That the Chef claim is devoid of ambiguity is a joke.

    Would the “sanitized” claim have made it through to issue at the EPO? I presume that the drafter needed “sanitized” to establish novelty. If that were indeed the case, the claim would have been found to lack novelty.

    Incidentally, is there a European patent in the FMC patent family? In the KSR case, the parallel Interflex app failed in Europe, when the EPO issued its first Office Action.

  98. Here’s the claim that relates to the Chef America issue that Dennis alluded to:

    “A method for sanitizing fowl that has been killed, plucked and eviscerated, comprising contacting the fowl with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at least a 100 ppm peracetic acid . . . and maintaining that contact for a time sufficient to sanitize the fowl without adversely affecting the fowl.”

    The term “sanitize” is expressly defined in the spec as “denote[s] a bacterial population reduction to a level that is safe for human handling and consumption.” Ecolab quite reasonbly (in my view) argued that the drafter of the claim and the specification was an ignoramus. The use of Ecolab’s product was not infringing because the use of Ecolab’s product did NOT render the chicken “safe for consumption”, i.e., YOU STILL NEEDED TO COOK THE CHICKEN.

    The Federal Circuit does a backflip to distinguish this case from Chef America. They argue that “sanitize” is ambiguous, but the term is expressly defined and to find ambiguity in the definition you need to drink a bottle of Jack Daniels. Like Chef America, one skilled in the art would surely be able to surmise what the claim is “supposed” to have covered in the alternate universe where a skilled draftsperson wrote the claim and the specification, but what was claimed in our universe was something very silly. Ecolab tried to get everyone to laugh along, but failed.

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