"Comprising" Doesn't Expand Explicitly Claimed Process Term

Dippin' Dots, Inc. v. Mosey et al. (05-1330) - February 9, 2007

Dippin' Dots (DDI) sued Thomas Mosey and other defendants for infringing US Patent 5,126,156, titled "Method of preparing and storing a free flowing, frozen alimentary dairy product". The defendants countered that DDI's patent was invalid and not infringed, and further accused DDI of a Walker-Process antitrust violation by asserting a "fraudulently acquired patent." The jury found for the defendants on all counts, ruling that DDI's prior sales of a cryogenically prepared novelty ice cream product predated the critical patent date, and that subsequent 1.132 declarations related to commercial success omitted these sales in the PTO proceedings with deceptive intent.

With regard to claim construction, DDI argued that the term "beads" was erroneously construed (claim 1: A method of preparing and storing a free-flowing, frozen alimentary dairy product, comprising the steps of . . . freezing said dripping alimentary composition into beads). The district court construed the term to mean "small frozen droplets . . . which have a smooth, spherical (round or ball shaped) appearance." The construction explicitly excluded processes which produce "any irregular or odd shaped particles such as 'popcorn.'"

The CAFC found no error in this construction. DDI also argued that using the term "comprising" raises a presumption that the list of elements is nonexclusive. The CAFC agreed in principle, but stated that in the context of DDI's claims, the word "'[c]omprising' is not a weasel word with which to abrogate claim limitations."

'Comprising' appears at the beginning of the claim—'comprising the steps of'—and indicates here that an infringing process could practice other steps in addition to the ones mentioned. Those six enumerated steps must, however, all be practiced as recited in the claim for a process to infringe. The presumption raised by the term 'comprising' does not reach into each of the six steps to render every word and phrase therein open-ended—especially where, as here, the patentee has narrowly defined the claim term it now seeks to have broadened. The district court’s limitation of the claim scope to exclude processes that produce some irregularly shaped particles is correct.

With regard to the Walker-Process violation, the CAFC found that there was insufficient evidence of DDI's intent to deceive, even thought the omitted evidence was highly material:

We believe, though, that to find a prosecution omission fraudulent there must be evidence of intent separable from the simple fact of the omission. A false or clearly misleading prosecution statement may permit an inference that the statement was made with deceptive intent. For instance, evidence may establish that a patent applicant knew one fact and presented another, thus allowing the factfinder to conclude that the applicant intended by the misrepresentation to deceive the examiner. That is not the case with an omission, which could happen for any number of nonfraudulent reasons . . . In this case, DDI argues that it did not disclose the Festival Market sales to the PTO because it believed that the product there was made without practicing [all] the [steps] of the claim within the specified temperature ranges . . . the defendants submitted no evidence of their own—aside from the absence of the Festival Market sales from the prosecution record—which affirmatively shows DDI’s fraudulent intent. That intent cannot be shown merely from the absence of evidence which would come about from the jury’s discounting DDI’s explanation.

AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, AND REMANDED