Yoon Ja Kim v. ConAgra Foods, Inc.
465 F.3d 1312, Sept. 20, 2006
This case involved a dispute over patent claims. Yoon Ja Kim, a food chemist, developed a new bread making process that she patented and then modified with a reissue application. She shared this alternative with 177 bread makers in the hopes they would pay her for a license. None did (background information provided by the SIPPI at http://sippi.aaas.org/ipissues/updates/?res_id=460). However, Kim suspected ConAgra of using her process and sued. The trial court found that ConAgra did not infringe on two of her claims — but that contrary to ConAgraâ€™s assertions, the claims were valid. After both parties appealed, the Court of Appeals affirmed.
ConAgra argued that the asserted claims were not valid because they improperly recaptured subject matter that had been surrendered in the reissue process. The court articulated the public policy support for the recapture rule, noting that it ensures â€œthe ability of the public to rely on patentâ€™s public record.â€ The court used a three-step process to test whether the reissue application violated the recapture rule and found that it did not; therefore the claims were valid.
More novel, perhaps, was the courtâ€™s interpretation of the claim construction that was given to the jury. The dissent relied on the words Kim used in the patent to describe the bread making process. The majority, however, read the patent claim construction in â€œview of the specification, of which they are a part.â€ This decision proved crucial. The court used the specification to narrowly define the function of the new ingredients. Although Kim was able to show that ConAgra used the same ingredients in its bread making, Kim had not shown these the same ingredients also performed the same function in ConAgraâ€™s bread, so ConAgra was not found to have infringed on the patent.