The opinion of the court was delivered by: Brieant, District Judge.
By motion filed January 27, 2000, heard and fully submitted on
February 25, 2000, Bagel Emporium of Armonk, Inc., defendant in
this patent infringement action, moves for summary judgment
pursuant to Rule 56, Fed.R.Civ.P. based on non-infringement.
Defendant also seeks an award of attorneys' fees pursuant to
35 U.S.C. § 285.
Plaintiff filed opposition papers on February 17, 2000, and
February 23, 2000. Defendant filed reply papers on February 22,
Patent No. 5,759,606 ("Patent 606") issued to Plaintiffs
assignors Bruce A. Kade and Robert W. Brown (the "Inventors") on
June 2, 1998, for a "Method of Preparing Bagel Dough to Form an
English Muffin Bagel." The application was filed June 24, 1996.
The origin of the bagel is unclear and there are many proposed
explanations as to when and where the bagel first appeared. The
earliest printed reference to a bagel is in the 1610 Community
Regulations of Cracow, Poland, which stated that a bagel was to
be given as a gift to a woman in childbirth. See Bagels — Home
11998.htm?rnk=r & terms=bagels citing Rosten, Leo, The Joys
of Yiddish. A popular origin story attributes the creation of
the bagel to a Viennese baker who wanted to honor Polish King
Jan Sobieski's defense of Austria from Turkish invasion. The
king was a skilled horseman and so the baker made ringed dough
resembling a stirrup. The Austrian word for stirrup is Beugel.
Bagel History at www.skokiebagels.com/history.html ("Bagel
History"); Merrow, Anne The Round Roll with the Hole,
www.princeton.edu/-eclectic/fall95/reporter/bagel.html. As this
event occurred in 1683, it is more likely the first commercial
bagel production as opposed to the first actual bagel. Another
source claims that in the seventeenth century bagels were
readily available in Russia. These bagels, called "bubliki,"
were sold on strings to take advantage of their shape. See
Merrow, supra. Another source suggests that the bagel is of
American origin, like chop suey, and was developed in the United
States in the style of the breads described in the foregoing
origin stories. Id. Other writers trace the bagel to Israel,
Poland, or Hungary. Id.
The traditional bagel is a doughnut shaped hard roll made of
raised dough which is boiled first and then baked in an oven.
For many years, the art of bagel making was a closely held
secret. The International Bakers' Union, founded in New York
City in 1907, guarded the secret and permitted only sons of
members to be apprenticed to the trade. The International
Bakers' Union has since disbanded, and methods of bagel making
are readily available to the public. A standard bagel is made
from flour, water, sugar, salt, and active dry yeast. See
Pastry Wiz Recipe Archive at
http:www.our-dailybread.com/recipes/whatisa.htm; See also
United States Patent No. 5,759,606 ("Patent 606"), Col 2, lines
25-35. Traditional bagels were sometimes seasoned with seeds or
spices baked directly into the surface of the bagel, such as
poppy, sesame, onion or garlic. Modern bagel makers have also
developed more exotic flavorings, such as whole wheat, egg, rye,
chocolate, jalapeno and cheese, raisin or blueberry.
The English muffin may have been derived from the Welsh
"Bara Maen." The "Bara Maen" was a leavened cake baked in the
10th Century on hot stones. See The Origin of Thomas' English
Muffins www.bestfoods.com/profile_history_thomas.htm. In early
19th Century England, servants made a similar item by baking a
mixture of leftover bread and biscuit dough and mashed potatoes
on a hot griddle. See History of Bays English Muffins
www.bays.com/info/history.html. Originally, only servants ate
the muffins, but eventually they became popular at all levels of
English society. Id. The English muffin was most popular in
Great Britain in the period preceding World War I, and for many
years they were sold door to door by the "muffin man." Id.
English Muffins became common in the New World when Samuel Bath
Thomas began the sale of English Muffins in about 1880
in his New York City bakery, according to a recipe he brought
with him from Plymouth England in 1875. The Origin of Thomas'
English Muffins, supra. The English muffin is made from flour,
sugar, salt, milk, butter, water, egg and active dry yeast.
See Clayton, Bernard, Bernard Clayton's Book of Small
Breads, (Simon & Schuster 1998). The dough is left to rise for
a long time in order to produce the distinctive porous texture
which is the basis for the muffin's popularity. Id; See also
Patent 606, Col 1, line 29-32. The dough is placed upon a hot
griddle and turned repeatedly until the English muffin is brown
and springy. Clayton, supra. English Muffins do not have the
characteristic center hole found in bagels.
Patent 606 contains three claims. Claim 1 of Patent 606
A method of preparing bagel ingredients to form an
English muffin bagel, comprising the following steps
a) mixing a bagel-dough mix;
b) kneading said bagel-dough mix;
c) letting said bagel-dough mix rise in a warm
environment for a first period of time sufficient to