FC issues electrifying non-infringement judgment in McCain french fry case
Background
McCain sued Simplot for infringing its 841 Patent, which claimed a process for treating fruits and vegetables with a high electric field to reduce their resistance to cutting without increasing their temperature to the point of a preheating step. McCain argued that Simplot infringed the 841 Patent by treating its potatoes with a pulsed electric field (PEF) before cutting them to make french fries. PEF treatments use very high electric field strengths (in the range of hundreds or thousands of V/cm) in short, microsecond pulse durations.
Justice McHaffie construed the essential term “high electric field” in claim 1 as referring to an electric field in the range of about 2-200 V/cm.
The amount of 2-200 V/cm is weaker than typical PEF treatment. The 841 Patent did not suggest the use of the voltages or pulse durations used in PEF, propose any parameters for PEF treatment, or suggest that PEF might have the effect of reducing resistance to cutting. The inventors, while being aware of the existence of PEF treatments, focused on electric fields in the range of tens of V/cm applied for periods in the range of seconds.
1. Infringement
McCain’s allegations of infringement focused on Simplot’s use of a PEF system which applied a pulsed electric field to potatoes before cooking them and cutting them into strips to produce french fries. Justice McHaffie’s construction of the term “high electric field” was dispositive of McCain’s infringement claim. The parties agreed that the pulsed electric field applied during Simplot’s process was outside the scope of the term “high electric field” as construed because PEF used a much higher electric field than the upper limit of 200 V/cm.
2. Invalidity
Justice McHaffie went on to consider Simplot’s invalidity arguments only to the extent that he adopted an incorrect construction of “high electric field”, premising his analysis on the construction of “high electric field” proposed by McCain: “any electric field strong enough to reduce the resistance to cutting of the vegetable or fruit, including PEF treatments using electric fields of 1 kV/cm or more” (the “alternative construction”).
A) Overbreadth
Justice McHaffie held that, on the alternative construction of claims 1 and 6, the 841 Patent was invalid for being broader than the invention made or contemplated by the inventors. The inventors did not make or contemplate a process in which electric fields of a strength of 1 kV/cm or more are applied to fruits or vegetables to reduce their resistance to cutting.
While the inventors were aware of PEF applications, as seen in their exchange of an article on PEF prior to the filing of the 841 Patent, they did not contemplate using the stronger fields that characterize PEF processes as an aspect of their invention, such as those as high as 1 kV/cm applied in microsecond pulses.
The inventors did not conduct testing using electric fields stronger than 101 V/cm or pulse applications shorter than one second. The inventors deliberately limited the electric fields they were studying and avoided the effects of stronger fields. The two “extremes” mentioned in their first study report were 26 V/cm for 160 seconds and 100 V/cm for one second. This first study was meant to delineate a “lower and upper limit”. Stronger fields were abandoned because they induced gelatinization of the potato, indicating too great an increase in temperature. The inventors narrowed their second and third studies to the range of 45-65 V/cm.
Though the inventors mentioned the term “pulsed electric fields” in the first two study reports, Justice McHaffie held that the inventors were not contemplating electric fields ten times the strongest field they tested. The mention of “pulsed electric fields” was an idiosyncratic use of the term by the inventors for their own purposes to describe the treatments referred to in their studies, and not a reference to PEF treatments as they are understood in the art. The inventors’ general observation that an increase in field strength decreased the energy needed for slicing did not provide sufficient evidence that the inventors contemplated the use of electric fields many times stronger than those tested.
There was no direct evidence from the inventors that they contemplated using electric fields as high as 1 kV/cm applied in microsecond pulses as an aspect of their invention. Though McCain began to develop PEF technology for use in its processing facilities in late 2004 or early 2005, two confidential contemporaneous documents related to McCain’s PEF project suggested that the inventors did not view their investigation of PEF technologies as an implementation or aspect of something they had already invented in connection with the 841 Patent in 2001. The documents indicated that the inventors believed PEF was a distinct technology.
B) Utility
Justice McHaffie held that the inventors did not have an articulable and sound line of reasoning to infer that PEF treatments applying electric fields of 1 kV/cm or more in microsecond pulses would have the claimed utility of reducing cutting resistance without raising the temperature of the vegetable or fruit to the extent of a preheating step.
The inventors did not demonstrate the utility of PEF treatments applying electric fields in the range of 1 kV/cm or more in their three studies. The inventors, through their three studies, only demonstrated the utility of applying electric fields in the range of 26-101 V/cm to reduce resistance to cutting, with the latter two studies being limited to the range of 45 to 65 V/cm.
Starting from the factual basis of the utility of electric fields in the range of 26-101 V/cm to reduce cutting resistance, the inventors had no sound line of reasoning to reach the conclusion that high-strength PEF treatments could also be used to reduce cutting resistance. The skilled person knew that electric fields in the range of hundreds or thousands of V/cm had materially different effects on plant tissues than those in the range of 26-101 V/cm. Higher field strengths were known to cause electroporation in plant tissues, the partial disintegration of the cell membrane causing the formation of pores which affect the texture and other properties of food tissue. These effects, combined with very short pulse durations to control the significant heat generated by high field strengths, are such that PEF applications are considered distinct treatments and areas of research. Given that higher field strengths were known to cause electroporation, a distinct effect and mechanism, the mere fact that lower field strengths reduced cutting resistance through some other mechanism was insufficient to justify an inference that higher field strengths would have the same effect on cutting resistance. The inventors’ finding of an inverse relationship between field strength and cutting resistance in the lower field strengths that they tested did not provide a prima facie inference of utility in respect of PEF treatments. The mere existence or knowledge of PEF treatments was insufficient to provide a sound basis to predict that PEF treatments would reduce cutting resistance.
Justice McHaffie likewise held that, even if the inventors had a sound line of reasoning to predict the utility of PEF treatments to reduce cutting resistance, there was no adequate disclosure of that line of reasoning in the 841 Patent. The single reference to PEF in the 841 Patent, and the general statement that the skilled person can select processing periods associated with an electric field, were insufficient to disclose the line of reasoning allowing extrapolation from the disclosed tests on fields in the tens of V/cm applied for 1-3 seconds to the predicted utility of PEF applications. The inventors’ statement that their test results showed an inverse relationship between field strength and cutting resistance, made in the context of a narrow range of lower-strength electric fields, was also insufficient.
Justice McHaffie dismissed McCain’s action. As Simplot’s PEF treatments did not involve the application of a “high electric field” as construed, Simplot did not infringe claims 1 or 6 of the 841 Patent. Even if the “high electric field” of claim 1 was construed to cover the PEF treatments used by Simplot, claims 1 and 6 were invalid for overbreadth and inutility.
A copy of the decision is available here.
