The Federal Circuit issued seven IP decisions last week, and I am covering only one of the cases today. This case is about food, one of my favorite subjects.
Bettcher Industries, Inc. v. Bunzl USA, Inc., Nos. 2011-1038, -1046 (Oct. 3, 2011) (Judges Bryson, Linn, and Reyna)
One of these things is not like the others… or maybe all three are different? The Federal Circuit panel had varying ideas about the differences between these electric knives, and what those differences mean to the parties’ dispute.
Bettcher owns a patent for an electric knife that is primarily used to trim meat for commercial food processing. Bunzl makes and sells replacement blades for the knives that Bettcher accused of infringing its patent. Here’s a simplified explanation of how the knife works: The knife is shaped like a ring. A butcher or meat processor swipes the knife over a piece of meat and shaves off the unwanted part, which slides through the center of the ring and falls onto the collecting surface below.
Structurally, the knife has a spinning inner ring, which holds the blade, and an outer ring that is stationary. There’s a ridge in the outer ring that fits into a groove in the inner ring. It looks like this:
The fight between the parties is about the shape of this ridge/groove combo. The patent says that the ridge and groove are “frustoconical”—shaped like a cone with the point end chopped off. Bunzl’s replacement parts have a round ridge:
Bettcher argued that the round ridge wears down until it is frustoconical, so the blade still infringes. Bunzl, in response, said (1) that its blades don’t infringe, and (2) that Bettcher’s patent is invalid because it is anticipated by one of Bettcher’s earlier blade designs. The earlier blade had a flat groove shape, but the edges were “chamfered” (a fancy word for angled) at the corners. Bunzl’s invalidity argument comes down this: Do Bettcher’s patent claims cover both of these shapes?
If the answer is “yes,” then the patent is invalid.
Coulda, Woulda, Shoulda…
As I mentioned, Bunzl argued that Bettcher’s patent is invalid because the earlier blade anticipates it. Bunzl said that the angled edges of the groove (the chamfers) create the required frustoconical shape and that they could have come in contact with the ridge. Bunzl provided a mock-up at trial to demonstrate this possibility. According to Bunzl, the fact that the chamfers didn’t work that way doesn’t matter.
Bettcher said that the angled edges in the earlier blades served the opposite purpose—to avoid contact between the groove corner and the ridge. So, the angled edges never worked the way Bunzl says that they could. According to Bettcher, the prior art blade only anticipates the patented blade if the earlier blade actually worked the same way.
On appeal, the judges on this panel didn’t groove with each other on the validity question. Two judges agreed with Bettcher, and stated that possibilities aren’t enough to unsettle the jury’s decision: “The speculative notion that by happenstance the chamfers might, under hypothetical circumstances, be capable of operating as a bearing race is an insufficient basis to mandate overturning the jury’s verdict.” (See page 17 of the majority opinion.)
Judge Reyna, writing his first patent opinion, dissented. Rather than focusing on what the prior art blade did, Judge Reyna looked at the claim language and concluded that the earlier blade meets all of the patent claims’ requirements. To Judge Reyna, the claims recite only the structure of the knife, not the way that structure operates: “The claims are directed to ‘a rotary knife blade’ and cover the product only, not any particular use of it.” (See page 7 of Judge Reyna’s dissent.) So, looking at the claims alone, he concluded that Bettcher’s earlier knife invalidated its patent.
But Wait, There’s More!
The court also addressed an unusual issue of estoppel involving reexaminations. (Estoppel is basically a limit on what information a court can consider based on a position that an agency, another court, or a party decided or took earlier.) This is a pretty technical point of law (and sadly does not lend itself to pictures), but it’s worth mentioning because this is the first time the Federal Circuit looked at this particular estoppel question.
While the district court litigation was going on, the Bettcher patent went through a reexamination at the PTO. During that reexam, the examiner decided that certain references did not invalidate the patent. Bettcher asked the district court to keep those references out of the litigation. Bettcher said that Bunzl was “estopped” (barred) from using those references because estoppel in reexam cases applies as soon as the examiner finishes the reexam. The district court agreed with Bettcher and did not let Bunzl include those references in the later court case involving infringement issues. Based on this decision, Bunzl asked for a new trial, but the trial court denied the request.
The Federal Circuit said that the trial court was wrong to exclude the references from the infringement suit. The court took a close look at the language of the statute and the legislative history—the record of Congress’s goals and reasoning in writing a law—and held that estoppel doesn’t apply until a party has had a chance to appeal to both the Board of Patent Appeals and Interferences and the Federal Circuit. Bunzl didn’t have that chance, so the Federal Circuit sent the case back to the district court to decide if it needs to hold a new trial on invalidity.
Much Ado about Nothing?
Whether or not the patent is invalid, the Federal Circuit agreed with the jury that Bunzl’s replacement blade doesn’t infringe it. Short answer: the round thing is not like the other (frustoconical) thing, and for Bunzl, and that’s good news.
You can read the Bettcher opinion and decide for yourself who has the better argument.