Ecolab, Inc. v. FMC Corp., (Fed. Cir. Jun. 9, 2009)

In this case, the district court (District of Minnesota) denied Ecolab's motion for JMOL and entered judgment on a jury's verdict that Ecolab infringed FMC's patent. The Federal Circuit, in an opinion by Judge Gajarsa, affirmed the district court in this respect.

The disputed claims related to chemical products used by beef and poultry processors to reduce pathogens, such as E. coli and salmonella, on uncooked beef and poultry. The accused products contained the antimicrobial compound peracetic acid ("PAA"), which had long been used as a surface sanitizer. The claims recited "[a] method for sanitizing fowl ... with an aqueous peracetic acid solution, which consists essentially of a sanitizing concentration of at a 1000 ppm peracetic acid ..." There were two issues in this case relating to claim construction: (1) whether there was prosecution history disclaimer such that the claims cover only solutions containing PAA as the sole antimicrobial agent; and (2) how the term "sanitize" should be construed given a definition of that term in the patent specification.

Regarding prosecution history disclaimer, Ecolab argued that FMC disclaimed compositions containing multiple antimicrobial agents during prosecution when, in response to a rejection by the examiner, FMC made numerous statement that its claims related to using PAA as the "sole antimicrobial agent" and the prior art did not show use of PAA "alone as a sanitizer." While the Federal Circuit noted that it "will find the applicant disclaimed protection during prosecution only of the allegedly disclaiming statements constitute 'a clear and unmistakable surrender of subject matter'", it also pointed out that the "prosecution history as a whole may demonstrate that the patentee committed no clear and unmistakable disclaimer." In this case, after FMC made its statements to the examiner allegedly disclaiming use of multiple antimicrobial agents, the examiner rejected FMC's argument, noting that the claims use the term "consists essentially of" PAA and are thus not limited to compositions containing PAA as the sole antimicrobial agent. In response, FMC made alternative arguments to overcome the prior art. In light of these facts, the Federal Circuit found there was no clear disclaimer.

Regarding claim construction, the patent claims were directed to a "method for sanitizing fowl" and the patent specification explicitly stated that the term "sanitize" "denote[s] a bacterial population reduction to a level that is safe for human handling and consumption." The question here concerned the appropriate point in time that the sanitized meat was safe for human consumption: immediately after treatment with PAA or only after the meat was cooked? The district court had instructed the jury the that the sanitized meat was not safe for consumption until it was cooked. Ecolab argued that the district court overrode the express definition of "sanitize" as set forth in the patent specification.

The Federal Circuit noted that "an inventor may act as his own lexicographer to define a patent term" and that "courts generally may not re-draft claims; we must construe the claim as written." The Court also recognized that FMC "notably fail[ed] to state that the invention can make poultry safe for consumption only after it is cooked." Next, the Court looked to its prior decision in Chef America, a case involving a method of baking cookies where the claim required heating dough to a specific temperature (which was high enough that it would burn the dough to a crisp) but, while the Federal Circuit understood the patentee meant that the oven, not the dough, should be heated to that temperature, the claim still unambiguously required the dough be heated to that temperature.

In this case, the Federal Circuit distinguished Chef America as it found the claim language at issue in Chef America was "unambiguous" whereas the term "sanitize" is ambiguous "in that it does not indicate when consumption is to take place." Regarding this issue, Ecolab's expert testified that in-plant inspectors examine poultry to determine whether it is fit for human consumption. The Court found this testimony helpful, stating "[s]urely, the inspectors do not require the poultry to be 'fit for human consumption' in its uncooked state." Thus, the Federal Circuit found the claims do not require that PAA-treated fowl be safe for immediate raw consumption and therefore affirmed the district court's denial of Ecolab's motion for JMOL of noninfringment.

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