Dippin’ Dots v. Mosey and Dots of Fun (Fed. Cir. 2007). [CORRECTED VERSION]
Everyone should remember their first experience with Dippin’ Dots. I was in Branson at Silver Dollar City. DD owns a patent covering its method of freezing, storing, and serving beads of delicious ice cream.
Several of DD’s distributors decided to go a cheaper route. They cancelled their orders with DD and found an alternative source. DD sued for patent infringement. The defendants counterclaimed with Walker Process antitrust claims based on DD’s enforcement of a “fraudulently acquired patent.” The antitrust claim was based on the inventor’s pre-filing use of the invention that had not been disclosed to the PTO.
The patent was found obvious and DD, the patentee, was held liable for antitrust violations.
Comprising the steps of: The accused products included a diversity of shapes of ice cream pellets — some spherical and others irregular. DD made two infringement arguments based on its claim language of “comprising the steps of . . . beads . . .” DD’s first argument, that all the pellets, regardless of shape, are beads was shot-down by the appellate panel who decided beads must be “spherical” based on limitations explicitly written in the specification. (In this case, the addition of silly wiggle language would have likely saved the day — especially since the drawing being described did not show spherical beads.)
DD’s second argument, that the “comprising” transition allows for infringement based on the accused spherical beads regardless of the existence of irregular pellets was also shot-down.
“As to DDI’s second argument, we acknowledge that the term “comprising” raises a presumption that the list of elements is nonexclusive. See Genentech (Fed. Cir. 1997). However, “‘[c]omprising’ is not a weasel word with which to abrogate claim limitations.” Spectrum (Fed. Cir. 1998). “Comprising” appears at the beginning of the claim—”comprising the steps of”—and indicates here that an infringing process could practice other steps in addition to the ones mentioned. Those six enumerated steps must, however, all be practiced as recited in the claim for a process to infringe. The presumption raised by the term “comprising” does not reach into each of the six steps to render every word and phrase therein open-ended—especially where, as here, the patentee has narrowly defined the claim term it now seeks to have broadened.”
Thus, the claimed step of [(3)] freezing said dripping alimentary composition into beads, could not be interepted to as “freezing the alimentary composition into both beads and irregular pellets.”
At first glance, this case seems odd, but the underlying decision rests on a common sense approach to the claim language. The court essentially found that “freezing said dripping alimentary composition into beads” meant that all of the dripping alimentary composition was frozen into beads. If the step was performed properly there would not be any ‘dripping alimentary compisition’ remaining to form the irregular pellets.
Claim 1 recites, for example:
A method of treating disease X comprising administering to a subject compound A.
Assuming the specification does not disclose administering any other compound other than A, could the claim be limited to administering solely compound A?
I am looking at the recent Dippin Dots decision that held “the recited steps must, however, all be practiced as recited in the claim for a process to infringe. The presumption raised by the term “comprising” does not reach into each of the… steps to render every word and phrase therein open-ended.”
link to fedcirc.us
In the hypo claim, the term comprising is present, but the comprising exists prior to the method steps and not before the compound.
Thus, I am wondering if one administered a prodrug of A-B or a mixture of A + B, does anyone think these products would still certainly infringe the above claim?
Without a doubt, I think the better practice is to now clearly claim a method of treating disease X comprising administering…an effective amount of a composition comprising compound A. But there are alot of patents out there that use the above language of claim 1 where the comprising language exists only before the method step(s).
I said: “But even for this claim I would expect to be interpreted as allowing minor unimportant things an the like that have no material effect (not just “impurities”, such as dissolved oxygen, adventitious water, etc.”
Malcolm asked: “What sort of “minor important things” are you thinking of that wouldn’t be fairly characterized as impurities or trace chemicals AND which one wouldn’t expect a competent drafter to have expressly included in the claim? ”
Dissolved oxygen is clearly one example, just like I said, at least for most kinds of chemistry (but obviously not all). You take your standard bottle of HPLC-grade solvent and look at the label where it talks about the impurities: it will list all sorts things, but not usually air/oxygen won’t be among them depite being there – it just doesn’t count as an “impurity” for most purposes. Likewise water won’t count as an impurity for many applications – for others of course it will be critical.
What is an impurity, what is “material” generally speaking, depends entirely on the circumstances, which only a PHOSITA can know.
The US seems to view the introduction of expert evidence into the courtroom as to what a claim means (ie. what a PHOSITA knows) with abhorence; possibly because of the costs involved, and maybe because of a lingering adherence to the idea that a patent should be able to be easily understood. But it’s completly routine elsewhere to have such evidence introduced (where of course, people won’t be spending their litigating dollars looking into “Best Mode” and “Inequitable Conduct”…)
Regards, Luke
“I would expect claim 3 to be interpreted narrowly in the sense of “organic solvent” and “porphyrin” and the presence of other things such as cyclodextrin. Ie. no inorganic-organic solvent mixtures would qualify as “organic solvent”, it would have to be all organic, to a certain degree of purity. But even for this claim I would expect to be interpreted as allowing minor unimportant things an the like that have no material effect (not just “impurities”, such as dissolved oxygen, adventitious water, etc. ”
What sort of “minor important things” are you thinking of that wouldn’t be fairly characterized as impurities or trace chemicals AND which one wouldn’t expect a competent drafter to have expressly included in the claim?
“Likewise a spatula is not a component of a chemistry kit, anymore than air is, and therefore irrelevant to any discussion about the kit’s components.”
Not that it matters, but I note that the claim does not refer to “chemistry kit” but simply “kit.”
As someone who has opened up and used more biochemical kits than I care to remember, I can certainly attest to kits containing stirring rods, instructions, empty tubes, tube caps, spatulas, measuring spoons, measuring cups, etc. Those sorts of things are standard in kits. Use Google and search for “kit” and “spatula” and recognize that what you are seeing is just the tiny tip of the iceberg.
As a claims drafter, I can also assure you that I would never ever let a claim like that in Norian out the door without telling the client “this claim is near worthless but it’s all the examiner would let us have.” I haven’t read all the prosecution history but when one writes a claim like that, one gets what one deserves. A kit claim with “consisting of” in the preamble is just begging to be worked around (like all “consiting of” claims).
I do agree that “air” is a trivial component and would be captured at the very least under the DOE in a kit claim which used “consisting” language.
Malcolm wrote:
“That’s the one where, in spite of the “kit” claim having been amended during prosecution from “comprising” to “consisting essentially of” and then to “consisting”, Judge Newman found that a “kit consisting of A, B, and C” was open enough to include an unnamed component “D” (a spatula) within its scope. Ridiculous.
The case is one of the most blatant attempts to redraft a poorly drafted claim that you’ll ever see”.
Well, I completely disagree. Hey, but I’m a chemist, like Judge Newman, so maybe I’m little too close to being a PHOSITA 🙂
Claims have to be read in light if what a PHOSITA would read the claim as saying, or at least they do now – they weren’t back in Chef America’s day…
I have never seen a patent kit claim disclaiming the presence of air, and yet all real-life kits include air. No chemist thinks of air as being a component of a chemical kit (in the patent sense of “kit”), unless it has something to do with the chemistry going on, so its presense or absence is irrelevant to any discussion of what the *components* of the kit are, whether using open or closed transitional phrases.
Likewise a spatula is not a component of a chemistry kit, anymore than air is, and therefore irrelevant to any discussion about the kit’s components.
You, like the dissent in Norian, assume anything in a “kit” as sold in the marketplace, is automatically a component of a “kit” as claimed by a patent. There is no basis for this assumption in pure logic, nor on reasonableness. “Consisting of” claims ahve never been held to exclude ALL non-claimed things from the claimed thing (composition, kit, method, whatever), only those of some materiality to claimed thing. As far as I can see “consisting essentially of” just allows you more play with what is material to the claimed items/components.
E.g. take the followng 3 claims.
1. An organic solvent porphyrin solution comprising an organic solvent and a porprhyrin.
2. An organic solvent porphyrin solution consisting essentially of an organic solvent and a porprhyrin.
3. An organic solvent porphyrin solution consisting of an organic solvent and a porprhyrin.
I would expect to see claim 1 interpreted very broadly as allowing all sorts of other things in the solution. E.g. cyclodextrin (being neither a solvent nor a porphyrin).
I would expect claim 2 to be interpreted broadly in the sense of “organic solvent” (ie. pretty well any solvent mixture containing some “reasonable” amount of organic solvent will do, even if it’s 95% inorganic, depending on what the specification has to say, of course) and “porphyrin” (ie. porphyrin analogs will probably be OK, again depending on the specification of course), but not for other things – ie. no other compounds such as cyclodextrin allowed – unless is such small amounts as to be immaterial.
I would expect claim 3 to be interpreted narrowly in the sense of “organic solvent” and “porphyrin” and the presence of other things such as cyclodextrin. Ie. no inorganic-organic solvent mixtures would qualify as “organic solvent”, it would have to be all organic, to a certain degree of purity. But even for this claim I would expect to be interpreted as allowing minor unimportant things an the like that have no material effect (not just “impurities”, such as dissolved oxygen, adventitious water, etc. Any other interpretation would not accord will reality, since there is no such thing as “pure” to a chemist, anymore than there is such a thing as a “perfect vacuum”.
Basic point: Patent “kit” doesn’t equal real-life “collection of items sold under a single label”.
Regards, Luke
The “comprising” construction requiring “ALL beads” is what is shaky about this decision. Sure, the beads must be spherical, but what excludes other beads in the mixture?
The one of the comments above, that “there is no step recited for separating non-spherical beads from spherical beads” is tellingly incorrect. With “comprising” you can have unrecited steps, so reciting such a step should not be necessary. This just seems like another trap for patent prosecutors.
Further to my earlier post, I am troubled by the “comprising” interpretation. It’s supposed to be an inclusive term, not a restrictive one. This probably contradicts earlier caselaw and thus would not have precedential value. The court here seems to have construed “comprising the steps of” to mean “comprising the following without variation, but allowing other steps”
As for adding the words “the steps of,” I was taught in the 1970s that “comprising” is for structure and “comprising the steps of” is for processes and methods and had the same meaning.
I agree that on its face, this decision seems odd. However, on reading the decision, what struck me as most important (and perhaps justifying this ruling) are: (1) the plaintiff-appellant itself urged the Special Master who did the original claim construction that a “bead” is “a small round ball or round drop”; and (2) a normally open-ended term might not be construed broadly where the patentee itself has narrowly defined the claim term it now seeks to have broadened.
Seems like a simple case of the courts giving the claim construction they felt the inequitable conduct perpetrator deserved. What goes around, comes around, no?
“Malcolm, are you refering to Norian v Stryker? (which is the only case off the top of my head I can think of in which she wrote a decision featuring a spatula – and which seems eminently sensible).”
That’s it. That’s the one where, in spite of the “kit” claim having been amended during prosecution from “comprising” to “consisting essentially of” and then to “consisting”, Judge Newman found that a “kit consisting of A, B, and C” was open enough to include an unnamed component “D” (a spatula) within its scope. Ridiculous.
The case is one of the most blatant attempts to redraft a poorly drafted claim that you’ll ever see.
“Comparing Dippin Dots to, say, Judge Newman’s infamous spatula decision, this case seems far far more reasonable”.
Malcolm, are you refering to Norian v Stryker? (which is the only case off the top of my head I can think of in which she wrote a decision featuring a spatula – and which seems eminently sensible).
Regards, Luke
The Federal Circuit could not punt on the infringement issue. Isn’t that what Cardinal Chemical is all about?
Walking Blindly: You’re correct. The court considered the entire batch of ice cream to be the claimed prepared alimentary composition. Since some of the batch was formed into non-beads, there was no infringement.
This makes me wonder if the ice cream residue presumably left on the manufacturing equipment would defeat infringement since the residue was not formed into beads and, instead, was most likely formed into some crusty substance that had to be cleaned off.
I’ve always found Gajarsa to be a bit of a bull in a china shop – they should have punted on the infringement issue and stuck w/ obviousness and inequitable conduct.
It seems that the court read the first three elements to require that the entire alimentary composition be turned into dots (preparing an alimentary composition…dripping SAID alimenty composition…freezing SAID dripping alimentary composition into beeds). So…I don’t think I’m going to take too much from this case for litigation. It does suggest how to tighten up your prosecution I suppose. All in all, a very mediocre opinion.
David French writes:
Visit a bead store and you will see that the beads are far from consistently spherical. Many are quite angular.
And look at the claim limitations:
(2) dripping said alimentary composition into a freezing chamber;
(3)freezing said dripping alimentary composition into beads;
My engineering intuition tells me that dripping syrup will not be perfectly spherical.
Was it the intention of the inventor only to manufacture spherical beads? Was it the intention of the inventor only to have exclusive rights over spherical beads? Was it the intention of the inventor to disclaim exclusive rights except in cases where all of the candy was in the form of spherical beads?
How come so many people are saying “right result?
For those without time to actually go to the case and read it, here are some important excerpts:
“(Plaintiff’s) primary arguments relate to the appropriate reach of the term “beads” in Claim 1, which the district court construed to mean “small frozen droplets . . . which have a smooth, spherical (round or ball shaped) appearance.” The district court’s construction also excluded processes which produce any “irregular or odd shaped particles such as ‘popcorn.’” The district court correctly found that the claim steps mentioning “beads” were limited to covering processes that produce beads and only beads. The accused process produces both spheres and irregular particles, so under this construction, the defendants do not infringe………
“……..the written description specifically describes “beads” as having a “smooth, spherical appearance.” ’156 patent col.5 ll.22-23. Indeed, DDI argued to the Special Master before whom the construction issue was originally presented that a “bead” was “a small round ball or round drop.” There is no error in the district court’s definition of this term.
“…..the term “comprising” does not reach into each of the six steps to render every word and phrase therein open-ended —especially where, as here, the patentee has narrowly defined the claim term it now seeks to have broadened. The District Court’s limitation of the claim scope to exclude processes that produce some irregularly shaped particles is correct.”
This looks to me like a case where I would seek a rehearing.
“The justices had me going along with them right up until Dennis said that adding strawberries and whipped cream might not infringe. I think that is how I would interpret this decision too, and that makes it a bad one.”
I wouldn’t sweat it. If the specification and prosecution history had gone on at length about a “strawberry and cream-less” confection, I might agree with Dennis.
I see something akin to the vitiation doctrine at work here. “Comprising” is open-ended but doesn’t include non-trivial additions which would destroy the purpose of the invention (here, to provide a method of producing a homogeneous collection of spherical beads).
Likewise, “consisting” is closed but doesn’t exclude trivial additions (i.e., trace molecules, atoms or subatomic particles).
Comparing Dippin Dots to, say, Judge Newman’s infamous spatula decision, this case seems far far more reasonable.
On the face of it, it seems reasonable to interpret comprising as referring to the items (steps or elements) directly following, and to require comprising to be used again if each element is non-limiting. The justices had me going along with them right up until Dennis said that adding strawberries and whipped cream might not infringe. I think that is how I would interpret this decision too, and that makes it a bad one.
It is clear that the ultimate outcome of the case was correct. In fact, the court didn’t even need to comment on the Claim Construction issue as it found the claim obvious in light of sales made be the patentee over a year prior to filing.
Why the court felt the need to comment on claim construction is beyond me.
I guess I will just muddle forward dismissing this panel’s analysis of the term “comprising” as an anamoly. Otherwise, I guess I have to accept that the difference between “consisting” and “comprising” is very small indeed.
“‘ve always hated the phrase “comprising the steps of.” Do we say “comprising the elements of” in an apparatus claim? It’s unnecessarily wordy. Give someone more words than they need and they’re going to misunderstand you.”
Best.Practice.Tip.Ever.
On the other hand, I doubt that omitting “steps” from the claim language would have helped the patentee here.
To the extent the claims were alleged by the patentee to cover confections made with non-spherical beads, the CAFC was going to find the claims invalid or not infringed.
Right outcome. Muddy reasoning.
So it goes.
It really is a rotten claim, isn’t it?
The axiom holds: bad claim drafting makes for bad cases.
“serving said product for consumption at a temperature between substantially -10° F and -20° F”
By way of “Chef America,” one might argue that this limitation isn’t met unless the dippity dots are eaten by somebody stuck inside a meat locker.
The court mistakenly equates the claimed “alimentary composition” with an accused batch of ice cream as a whole. However, a batch could be considered several prepared compositions, some of which were formed entirely into beads and thus infringed the claim.
It seems like the wrong decision to me. As soon the competitor made two frozen beads even if the remaining “beads” were non-spherical, the claim is infringed. In other words, the claim does not recite “freezing all of said dripping into beads.”
I’ve always hated the phrase “comprising the steps of.” Do we say “comprising the elements of” in an apparatus claim? It’s unnecessarily wordy. Give someone more words than they need and they’re going to misunderstand you. What’s wrong with just “comprising:” anyway? Does it get lonely?
“The decision on whether to construe the competitor’s product, in view of the claim language, as:
[(3)] freezing said dripping alimentary composition into beads and non-beads;
(which involves the modification of a step)
instead of:
[(3)] freezing said dripping alimentary composition into beads;
[(4)] freezing said dripping alimentary composition into non-beads;
(which involves the addition of a step)
seems entirely arbitrary and capricious.”
Seems unclear to me. It reads like you’re freezing the composition twice.
The claim also calls for “serving said beads for consumption at a temperature between substantially -10° F. and -20° F.”
According to this case, wouldn’t it be a work-around to serve the beads with strawberries & whip-cream?
I agree that the above comment that:
”According to the panel, the term “beads” means “spherical beads.” In light of the specification and prosecution history (and common usage, frankly) that construction seems very reasonable.”
Regarding the claim format, the CAFC held that:
“The presumption raised by the term “comprising” does not reach into each of the six steps to render every word and phrase therein open-ended” ” and
“The accused process produces both spheres and irregular particles, so under this construction, the defendants do not infringe.”
In view the comments above, a claim format is proposed as follows.
Is this the better format to make DD’s claim cover the accused product at least literally?
I claim:
1. A method of preparing and storing a free-flowing, frozen alimentary dairy product, comprising the steps of:
preparing an alimentary composition for freezing;
dripping said alimentary composition into a freezing chamber;
freezing said dripping alimentary composition into said product comprising beads;
storing said product at a temperature at least as low as -20° F so as to maintain said product free-flowing for an extended period of time;
bringing said product to a temperature between substantially -10° F and -20° F prior to serving; and
serving said product for consumption at a temperature between substantially -10° F and -20° F so that said product are free flowing when served.
According to the panel, the term “beads” means “spherical beads.” In light of the specification and prosecution history (and common usage, frankly) that construction seems very reasonable.
So when a step such as steps 3-6 recite “beads” (i.e., “spherical beads”) and there is no step recited for separating non-spherical beads from spherical beads, the patentee is precluded from arguing that step (3) encompasses dripping into “spherical beads” and schoos or whatever other shapes.
A method of preparing and storing a free-flowing, frozen alimentary dairy product, comprising the steps of:
[(1)] preparing an alimentary composition for freezing;
[(2)] dripping said alimentary composition into a freezing chamber;
[(3)] freezing said dripping alimentary composition into beads;
[(4)] storing said beads at a temperature at least as low as -20° F. so as to maintain said beads free-flowing for an extended period of time;
[(5)] bringing said beads to a temperature between substantially -10° F. and -20° F. prior to serving; and
[(6)] serving said beads for consumption at a temperature between substantially -10° F. and -20° F. so that said beads are free flowing when served.
(note: reproducing the entire claim is always preferred)
It’s best to avoid highly technical readings of “comprising” or “consisting of” language. Especially with regards to the latter, if you want to get technical about it, an infringer can always argue some step or some molecule that is included in its composition that is not literally recited in the claim.
I don’t know the difference between Dippin’ Dots and the accused products, but the “fundamentally different products” rationale sounds like an improper comparison of the commercial embodiment to the accused product. Would the DD patent be broader if it was a paper patent with no embodiment to compare?
Moreover, even if the term bead was narrowly defined, how does that require “all” beads, when the claim uses the term “comprising”? If the accused products used half beads and half squares, how is the claim avoided?
By focusing on broadening, the panel assumes that the patentee amended its claims to exclude any production of non-beads. It didn’t. Instead, the patentee narrowly defined the process to include the production of beads.
I believe that Malcolm’s “fundamentally different products” rationale is the behind-the-scenes motivation for this decision. I disagree with this rationale because it appears to reach beyond the text of the claims to essentially focus on the gist of the invention.
Of course, the patentee should have claimed a single bead in some sort of apparatus claim–thus a single bead would have infringed.
“The panel does not give any reasoning why a process that produces beads, but ALSO produces non-beads, will not infringe the claim.”
That’s easy: “the patentee has narrowly defined the claim term [beads] it now seeks to have broadened.”
I don’t think this case should be read as having a profound effect on process claims generally. The real lesson is that you can’t claim an open-ended process that you’ve narrowly defined in the specification to go after different processes that yield fundamentally different products.
I am with you. The panel does not give any reasoning why a process that produces beads, but ALSO produces non-beads, will not infringe the claim.
The patent specification may have excluded such a reading of a claim with “comprising” language, or it may have been disclaimed in the prosecution history, but there is no analysis in the decision.
Can someone clear this up?
The claim requires:
A method of preparing and storing a free-flowing, frozen alimentary dairy product, comprising the steps of:
[(1)] preparing an alimentary composition for freezing;
[(2)] dripping said alimentary composition into a freezing chamber;
[(3)] freezing said dripping alimentary composition into beads;
…
It’s news to me that a competitor’s process that produces beads, but ALSO produces non-beads, will not infringe the claim.
The court’s logic seems skewed also:
“The transition phrase ‘comprising the steps of’ does not allow for any additional activity within a step. Rather, that transition only broadens the claim coverage to include the practice of ‘other steps in addition to the ones mentioned.'”
The decision on whether to construe the competitor’s product, in view of the claim language, as:
[(3)] freezing said dripping alimentary composition into beads and non-beads;
(which involves the modification of a step)
instead of:
[(3)] freezing said dripping alimentary composition into beads;
[(4)] freezing said dripping alimentary composition into non-beads;
(which involves the addition of a step)
seems entirely arbitrary and capricious.
The Supreme Court, during the KSR arguments, was concerned with the effects of questioning the validity of such a large number of issued patents over the last decade or two by changing the obviousness standard.
This decision would seem to have a similar effect on issued patents. I hope someone else can jump in and tell me I’m reading the decision wrong.
-A
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