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United States District Court, S.D. New York

August 8, 2005.

LAND O'LAKES, INC., Defendant.

The opinion of the court was delivered by: JED RAKOFF, District Judge


The retrial in above-captioned action took place between June 28, 2005 and June 30, 2005, with the parties stipulating that, for purposes of anticipation, claims 1 and 19 of the '670 Patent could be treated as identical, and that, therefore, the jury need only consider whether claim 1 of the '670 Patent was anticipated by a prior invention produced between June 1, 1992 and November 21, 1993 (the dates also agreed to by the parties). See Order dated July 1, 2005; Memorandum dated August 8, 2005. After the jury returned a verdict in favor of defendant, judgment was entered for defendant. Plaintiffs now move for judgment in their favor as a matter of law, claiming that there was no legally sufficient evidentiary basis for a reasonable juror to have found that the alleged prior invention, Kemps Coffee Right, included all the claim limitations of the '670 Patent.

A court shall not grant a motion for judgment as a matter of law "unless, viewed in the light most favorable to the nonmoving party, the evidence is such that, without weighing the credibility of the witnesses or otherwise considering the weight of the evidence, there can be but one conclusion as to the verdict that reasonable [persons] could have reached." Nadel v. Isaksson, 321 F.3d 266, 272 (2d Cir. 2003) (internal quotation and citation omitted). None of plaintiff's arguments meets this standard. Rather, plaintiffs simply rehash the arguments that this Court previously rejected on summary judgment and/or that the jury reasonably rejected at trial.

  Accordingly, plaintiffs' motion for judgment as a matter of law is hereby denied.


  In the original trial, the jury found that defendant Land O'Lakes, Inc. infringed claims 1*fn1 and 19*fn2 of plaintiffs' U.S. Patent 5,480,670 (the "`670 Patent"), and awarded plaintiffs compensatory damages of $2,578,431 and willful damages of $421,569 for a total award of $3 million. Thereafter, the Court, on defendant's motion for judgment as a matter of law, vacated the jury's verdict and entered judgment in favor of defendant. But on appeal, the Federal Circuit ordered a retrial limited to whether claims 1 and 19 of plaintiffs' patent were anticipated by a product produced sometime between June 1, 1992 and November 21, 1994, and further provided that, if no anticipation was found, the original verdict in favor of plaintiffs should be reinstated. See Order of Federal Circuit, 03-1182, -1202, April 30, 2004, at 14.

  Both parties then moved for summary judgment, but, by Order dated May 18, 2005, the Court denied both motions, with opinion to follow. Before the opinion could issue, the retrial took place, and the jury unanimously found for defendant.*fn3 Although now unnecessary the Court hereby issues the promised Memorandum setting forth the reasons for the Court's May 18 denial of both parties' respective summary judgment motions.*fn4

  Principally, plaintiffs argue that the '670 Patent is not anticipated because Formulas 214 and 214PD of Kemps Coffee Right do not satisfy the claim limitations of the Patent, as defendant cannot point to a milk component in the formulation of Kemps Coffee Right that has the requisite amount of butterfat, i.e., 1-3.57% butterfat by weight, while still leaving enough additional milk solids to satisfy the requisite amount of additional milk solids, i.e., 2-12% by weight, (collectively, the "Claimed Range"). See Memorandum in Support of Plaintiffs' Motion for Summary Judgment ("Pls. Mem.") at 6. As to Formula 214, plaintiffs contend that both the milk ingredient (3.8% butterfat by weight) and the skim milk ingredient (0.1% butterfat by weight), in addition to the combination of both ingredients (0.312% butterfat by weight), do not fall within the Claimed Range. See Pls. Mem. at 8; Declaration of William T. Pordy, March 25, 2005 ("Pordy Decl."), ¶ 6. And the addition of butterfat in the form of cream, which according to plaintiffs "is not milk," leaves only 0.205% additional milk solids, which is well below the Claimed Range. See Pordy Decl. ¶ 7. As to Formula 214PD, plaintiffs argue the milk ingredient (3.8% butterfat by weight) and the skim milk ingredient (0.104% butterfat by weight), in addition to the combination of both ingredients (4.37% butterfat by weight) leave no additional milk solids, and do not fall within the Claimed Range. See Pls. Mem. at 8; Pordy Decl. ¶ 8. Further still, plaintiffs contend that defendant has failed to produce any evidence that either Kemps Coffee Right Formula 214 or 214PD simulated the "taste, body, appearance, mouthfeel and organoleptic properties of Half & Half," and/or that Kemps Coffee Right "performed like the gold standard for coffee lightening, Half & Half." Pls. Mem. at 9. As a result, according to plaintiffs, neither the milk formula in Formula 214 nor Formula 214PD satisfies all the limitations of the '670 Patent and, therefore, does not anticipate that patent.

  Conversely, Land O'Lakes contends that claims 1 and 19 of the '670 Patent are anticipated since a prior invention was disclosed between June 1, 1992 and November 21, 1994. In support of this argument, defendant suggests that the Kemps Coffee Right was sold, in July, 1993, with a nutritional label that teaches all that is necessary to practice the relevant claims of the '670 Patent. See Def. Mem. at 15-17; Defendant Land O'Lakes, Inc.'s Memorandum of Law in Opposition to Plaintiffs' Motion for Summary Judgment ("Def. Opp. Mem.") at 2-3; Declaration of Lloyd E. Metzger, March 31, 2005 ("Metzger Decl."), ¶ 7. And defendant points to Kemps' formulas that set forth in commercial quantities the "recipe" for the production of Kemps that were "very close to the ranges disclosed by the Kemps nutritional label." Def. Mem. at 15-17; Mezger Decl. ¶¶ 5, 8; Kemps Nutritional Label & Trial Exhibit 323 (L0L005362), attached as Exs. A & B, respectively, to Metzger Decl. In addition, defendant contends that plaintiffs' argument that cream is not milk, and therefore cannot be used to bring the milk base to the appropriate level of butterfat, is meritless given Dr. Pordy's prior testimony. See Def. Opp. Mem. at 5; Second Declaration of Mark Sullivan, April 28, 2005 ("Second Sullivan Decl."), at Exs. KK at 201 & LL at 87. Adding the cream ingredient to the skim milk and whole milk results in a milk base of 8.5% solids and butterfat content of approximately 3.35% by weight — within the range of limitation 1. See id. at 4-5; Second Sullivan Decl. at Ex. JJ at 6 & Ex. A at 2. Finally, defendant proffers that Land O'Lakes' Fat Free Half & Half formulation anticipated claims 1 and 19 of the '670 Patent because it was known and used in a "printed publication" prior on October 8, 1994. See Def. Mem. at 14; Declaration of Derrick Stagle, March 31, 2005, ¶ 10, Exs. A-B.

  Finally, the parties butt heads over whether the use of "condensed skim milk" is the same as "fluid skim milk," compare Plaintiffs' Reply Brief Re: Plaintiffs' Motion for Summary Judgment at 2 with Def. Opp. Mem. at 6, and whether plaintiffs improperly "fractionate" the claim elements — i.e., arbitrarily manipulate or divide the same ingredient (namely, skim milk) and claim said element as two volumes, compare Plaintiffs' Opposition to Defendant's Motion for Summary Judgment at 9-12 with Def. Mem. at 7-14.

  Under 35 U.S.C. § 102, a party seeking to prove that a prior art anticipates must prove by clear and convincing evidence that a single prior art teaches each and every element of a claimed invention. Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 632 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987); PPG Indus., Inc. v. Guardian Indus., 75 F.3d 1558, 1566 (Fed. Cir. 1996); see also Titantium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) ("It is also an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is `anticipated' if one of them is the prior art."). Prior to the retrial, there remained, as the parties' competing contentions show, still numerous issues of material fact concerning whether each and every element of the '670 Patent was anticipated. For example, there were questions relating to the amount of butterfat by weight and the amount of milk solids truly present in both Kemps Formulas. In addition, there was an issue as to whether any prior invention simulates the taste and mouthfeel of Half & Half. Furthermore, there was a question of fact as to whether the addition of condensed skim milk to the milk base should be treated as an additional milk solid and if it provides the appropriate amount of additional milk solids necessary to satisfy all the claim limitations. Finally, there was the lingering question whether either party "fractionates," or arbitrarily divides, the same ingredient into two, separate ingredients only to reintroduce them later.

  Accordingly, without multiplying examples, the Court denied both parties' respective motions for summary judgment given the many genuine issues of material fact that remained to reached by the jury — as they ultimately were.


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