Opinion
01 C 3895
August 23, 2002
Plaintiff Yoon Ja Kim brings this suit, charging defendant The Earthgrains Company ("Earthgrains") with infringing the claims of United States Patent No. Re. 36,355 (the "'355 Patent"). Kim alleges that Earthgrains' Butter Top and D'Italiano bread brands each infringe the '355 Patent because each contains an amount of ascorbic acid and a food acid, namely, vinegar that each fall within the claimed ranges in the '355 Patent. Earthgrains moves for summary judgment of patent invalidity, on the theory that its Butter Top bread brand was on sale one year prior to Ms. Kim's earliest patent filing.
The '355 Patent is a re-issue of United States Patent No. 5,510,129, filed September 19, 1994 and issued April 23, 1996 (the "'129 Patent"). The '129 Patent was a continuation-in-part of Patent Application Serial No. 147,995, which was filed on November 5, 1993 and has since been abandoned. Based on the November 5, 1993 filing date of the '129 Patent, the earliest possible critical date for the '355 Patent is November 5, 1992. That is, November 5, 1992, the date one year prior to the filing date of the earliest patent, is the date before which any public use, description in a printed publication, offer for sale or actual sale of the claimed invention invalidates the patent at issue.
For the reasons discussed below, I grant Earthgrains' motion for summary judgment that the '355 Patent is invalid. The claims of the '355 Patent are invalid under 35 U.S.C. § 102 (b) if they cover a product on sale and in public use before the critical date of November 5, 1992. Earthgrains has provided evidence, unrebutted by Ms. Kim, that one of the products that Ms. Kim alleges is covered by the claims of the '355 Patent, specifically, the Butter Top bread brand, was on sale more than one year before Ms. Kim filed the application that resulted in the issuance of the '355 Patent, in violation of 35 U.S.C. § 102 (b).
Ms. Kim's response to Earthgrains' motion focuses on how, why and when she made her invention but does not address the declaration of Donald G. Knott that sets forth the descriptions of the Butter Top bread brand and the length of time that such bread brand has been an sale to the public. Unfortunately for Ms. Kim, the information she discusses is irrelevant to the instant inquiry. Although it is not clear from the record whether the Butter Top bread brand does in fact contain amounts of ascorbic acid or vinegar that fall within the claimed ranges in the '355 Patent (and it may well be that the Butter Top bread brand does not fall within the claimed ranges of the '355 Patent), Ms. Kim alleges that it does and it is this allegation that renders the '355 Patent invalid. See Vanmoor v. Wal-Mart Stores, Inc., 201 F.3d 1363, 1366 (Fed. Cir. 2000).
Although ordinarily a defendant has the burden of proving that the products at issue are the subject of the pre-critical date sales anticipated by the patent, the Federal Circuit held that "that burden was satisfied by the [plaintiff's] allegation that the accused [products] infringe the patent." Id. at 1366. It is not necessary for Earthgrains to prove that the Butter Top bread brand sold before the critical date contained every limitation of the claims; Ms. Kim's factual allegation that it does is enough. Thus, since Earthgrains has proven with the unrebutted declaration of Mr. Knott that at least one loaf of the Butter Top bread brand was on sale before the critical date, Ms. Kim, because she alleges infringement, is bound by a form of estoppel to her allegation that the Butter Top bread brand falls within the scope of the claims.
For the foregoing reasons, defendant's motion for summary judgment of patent invalidity based upon 35 U.S.C. § 102 (b) [9-1] is GRANTED.