it employed Mr. Kade. Rozens Dec. ¶ 3. Mr. Kade's employment
with Defendant ended in May 1996, before the Patent was applied
for. Neither Mr. Kade nor Plaintiff witnessed Defendant's method
for making English muffin bagels between May 1996 and the filing
of the complaint.
On November 13, 1998, Plaintiff mailed to Defendant a cease
and desist demand and an offer of license to practice the art of
the patent. Defendant has not accepted the offer of license and
has continued to manufacture English muffin bagels. Plaintiff
filed the present action on August 11, 1999, against Howard
Rozins and Michael Rozins d/b/a Bagel Emporium, seeking damages
for patent infringement and an injunction preventing further
infringement. On December 3, 1999, this Court dismissed the
action as to Howard Rozins and Michael Rozins and substituted
Bagel Emporium of Armonk, Inc., as defendant.
The standards for granting summary judgment in this Circuit
are so well known as to obviate the need for citation. We note,
however, that all facts must be viewed in the light most
favorable to the non-moving party.
In order to establish a prima facie claim of Patent
infringement under 35 U.S.C. § 271(a) each element of the patent
claim must be present in the accused violation. Lemelson v.
United States, 752 F.2d 1538, 1551 (Fed.Cir. 1985). In a claim
of infringement of a method or process patent such as this one,
all steps of the method or process must be used by the alleged
infringer. See, e.g., Joy Technologies, Inc. v. Flakt, Inc.,
6 F.3d 770, 775 (Fed.Cir. 1993). An accused method does not
infringe a patent if any of the claimed steps is not practiced.
Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792, 798
Defendant's method of making English muffin bagels does not
infringe Patent 606 because Defendant does not perform all of
the claimed steps. Defendant's method does not contain three
rising periods, contrasted with one, and it does not provide for
the long (approximately three hour) rising period.*fn2 Also
Defendant's bagels are not griddle baked like English muffins,
as called for in the patent, but are cooked in an oven like
bagels. Unlike most bagels, neither the product described in the
patent nor that sold by Defendant is boiled.
Patent 606 calls for three separate rising periods.
Defendant's method uses only one rising period. See Birney
Aff. (Doc. No. 14); Video, Ex. 1 to Golden Aff. The short time
the dough remains on a work table while it is transferred from
the mixing machine to the shaping machine does not constitute a
rising period because the dough remains on a work table for
approximately two to ten minutes, depending solely on how long
it takes the baker to cut the dough into long strips and
transfer the strips into the shaping machine. Video, Ex. 1 to
Golden Dec. Patent 606's specification calls for a rising period
before shaping of a quarter hour. See Patent 606, Col. 2,
Plaintiff claims that the time the dough is on the table is
sufficient to satisfy Claim 1, step c's requirement of a "time
sufficient to form a first-rise bagel dough." Under the doctrine
of equivalents, a process may infringe a method patent if the
allegedly infringing steps perform "substantially the same
function in substantially the same way, to obtain the same
result" as the patented steps. See Warbern Packaging
Industries, Inc. v. Cut Rate Plastic Hangers, Inc.,
652 F.2d 987 (2d Cir. 1981), cert. denied, 454 U.S. 1149, 102 S.Ct.
1014, 71 L.Ed.2d 303 (1982). However, in this case, the doctrine
of file wrapper estoppel, or prosecution history estoppel,
precludes this contention. File wrapper estoppel prevents a
patent holder from adopting a position during litigation which
contradicts a position taken during the prosecution of the
patent application. Narda Microwave Corp, v. General Microwave
Corporation, 675 F.2d 542 (2d Cir. 1982); See also E.I. du
Pont de Nemours & Co. v. Phillips Petro., 849 F.2d 1430, 1438
(Fed.Cir. 1988), cert. denied, 488 U.S. 986, 109 S.Ct. 542,
102 L.Ed.2d 572 (1988) ("Those arguments . . . must be examined
to ascertain the true meaning of what the inventor intended to
convey in the claims.").
During the patent prosecution, the applicants stated that a
five minute rise time would be outrageously short. Response to
Office Action, February 2, 1998, in Ex. 2 to Golden Dec. The two
to ten minutes in which Defendant's dough is being transferred
to the shaping machine would be such an "outrageously short"
rise time. The same analysis applies to the time the dough
remains on a tray after shaping but before the dough is covered
and left to rise. This time, half a minute to eight minutes in
Defendant's process, is insufficient to satisfy the rising
period in Claim 1, step e. ("another quarter hour or so") The
absence of the rising periods claimed in Patent 606, Claim 1,
steps c and e precludes a finding of infringement.*fn3
Defendant's method does not contain the approximately three
hour rising period mentioned in step f of Claim 1. While
Defendant does use a long rising period in its method, Defendant
states that the longest it allows any dough to rise is two
hours. Rozins Dec. ¶ 16. The only evidence offered that the
dough is allowed to rise longer is an alleged statement by an
unidentified counterman at the defendant's Bagel Emporium branch
in White Plains, New York and the fact that Defendant's bagels
contain the same "kiss" marks*fn4 as bagels produced by
Patent 606's method.*fn5 The unidentified counterman
allegedly stated that the English muffin bagels were "left to
rise for 2 1/2 hours." Sharp Dec. ¶ 4. This statement is
inadmissible as hearsay, and can not be used to show that
Defendant uses Plaintiffs protected three hour rising period.
The fact that the bagels made by Defendant's process have a
similar appearance to those made using Patent 606's process does
not establish that Defendant uses an approximately three hour
rising period. Defendant admits that it uses a long, 30 to 120
minute rising period in its process. The similar "kiss" marks
may result from this admitted long rising period. Infringement
of a method patent is determined by comparison of the allegedly
infringing process used to the patented process, and not a
comparison of the commercial end products. Zenith Laboratories,
Inc. v. Bristol-Myers Squibb Co. 19 F.3d 1418, 1423 (Fed.Cir.
1994) cert. denied, 513 U.S. 995, 115 S.Ct. 500, 130 L.Ed.2d
409 (1994). The fact that Defendant's long rise period produces
the same "kiss" marks as Patent 606's process does not convert a
non-infringing process in to an infringing one.
Defendant does not griddle bake its English muffin bagels as
Patent 606's method requires. As the term "griddle bake" is not
defined within the patent, the Court
must use the term's ordinary meaning. Gentex Corp. v. Donnelly
Corp., 69 F.3d 527, 530 (Fed.Cir. 1995). The common definition
of a griddle is "a flat surface (as of soapstone or metal) on
which food (as batter or bacon) is placed to be cooked by dry
heat (as from fire or an electric element)." See Webster's
Third New International Dictionary 998 (Unabridged Ed. 1993).
The common definition of griddle bake would be to cook by dry
heat on a griddle, where all the heat comes from below. The
common definition of an oven is "a heated enclosure of varying
construction used for such purposes as (1): a chamber in a stove
used for baking or roasting." Id. at 1605. Unlike a griddle in
which the top is open to the atmosphere an oven has confined
heated ambient air surrounding what is being cooked. Further,
Patent 606 specifically distinguishes griddle baking from oven
baking, and suggests griddle baking is part of the "divergence"
of the patented method from traditional bagel making which uses
an oven. See Patent 606, Col. 2, lines 52-57. Defendant bakes
English muffin bagels in the same oven as it does regular
bagels. The presence of flat pans used within Defendant's oven
to remove the bagels easily does not convert oven baking into
There is no infringement, therefore Defendant is entitled to
judgment in its favor.
Pursuant to 35 U.S.C. § 285, "[t]he Court in exceptional
circumstances may award reasonable attorney fees to the
prevailing party." Defendant suggests that this is an
appropriate situation for an award of fees because Plaintiff did
not view Defendant's method of making English muffin bagels
before filing this lawsuit.
Before filing a patent infringement action, Plaintiff must
engage in a reasonable inquiry and Plaintiffs counsel must do
more than simply rely on a client's lay opinion that Defendant
is infringing the patent. See e.g., Cambridge Products, Ltd. v.
Penn Nutrients, Inc., 962 F.2d 1048, 1050 (Fed.Cir. 1992); See
also, S. Bravo Systems v. Containment Technologies Corp.,
96 F.3d 1372, 1375 (Fed.Cir. 1996) ("If the district court finds
that Bravo's attorneys conducted no investigation of the factual
and legal merits of Bravo's claims other than to rely on Mr.
Bravo's lay opinion that CTC was infringing the '024 patent, it
would be difficult to avoid the conclusion that sanctions are
Plaintiff claims that it attempted to perform a thorough
pre-filing investigation. Plaintiff states that counsel
attempted to examine Defendant's method of making English muffin
bagels, but that Defendant cancelled every appointment Plaintiff
scheduled. Plaintiffs counsel spoke with Mr. Kade, one of the
Inventors, regarding Defendant's access to Patent 606's method
and examined Defendant's finished product and determined that it
had the typical appearance resulting from the use of Patent
606's method. Counsel interviewed potential witnesses and
acquired affidavits from two of these potential witnesses.
On this record, the Court does not believe that Plaintiffs
counsel was in any way careless or unprofessional in bringing
the suit and finds that no exceptional circumstances exist which
would justify fee shifting. The American Rule should apply here,
and an award of legal fees is inappropriate in this case.
For the foregoing reasons, Defendant's motion for summary
judgment is granted. The Court declines to award legal fees to
Defendant. The Clerk shall file a final judgment of