TO: Professor Risch
FROM: Jennifer Deitz
DATE: November 25, 2007
RE: Patent Law Case Brief
Kowalski and Hawaii Int’l Seafood Inc., v. Ocean Duke Corp., 2007 U.S. Dist. LEXIS 86034
Decided: November 20, 2007
FACTS: Hawaii International Seafood, Inc. owns a patent titled “Process for Manufacturing Tasteless Super-Purified Smoke for Treating Seafood to be Frozen and Thawed,†U.S. Patent 5,972, 401. The patent was originally granted to Hawaii International’s President, William Kowalski on October 26, 1999. Hawaii International and Kowalski filed an infringement suit against Ocean Duke Corporation. Ocean Duke filed for summary judgment claiming that it had not infringed because its supplier uses a “completely different patented process†to treat products it sells, a process described in Patent No. 6, 331, 322, the Shih patent.
ISSUE: Whether there is no genuine issue of material fact that Ocean Duke infringed on Hawaii International Seafood’s patent, and thus should be entitled to summary judgment as a matter of law.
HOLDING: The U.S. District Court for the District of Hawaii dismissed Ocean Duke’s motion for summary judgment.
REASONING: The Court first stated that the only way an accused infringer may obtain summary judgment of non-infringement by: 1) “providing evidence that would preclude a finding of infringement,†or 2) “by showing that the evidence on file fails to establish a material issue of fact essential to the patentee’s case.†(Citing Novartis Corp. v. Ben Venue Laboratories, Inc., 271 F.3d 1043 (Fed. Cir. 2001)) Next the Court examined Ocean Duke’s argument that its supplier used a completely different process described in a different patent, the Shih Patent. Ocean Duke first claimed a difference in the “initial heating device and the materials used to generate the volatile compounds.†Ocean Duke argued that the Shih Patent involves a process of heating charcoal in a vacuum oven, to a temperature of 180 degrees Celsius and by contrast the Kowalski Patent burns sawdust, not charcoal at a temperature range of 204-501 degrees Celsius. The Court stated that it did not need to decide the motion on those grounds because a large amount evidence indicated that there was a genuine issue of material fact based on the November 19 Claims Construction Order. In that Order, the Court held that the phrase in the Kowalski Patent, “heating organic material to generate smoke†included not only sawdust but also any carbon-containing materials, including charcoal. The Court also stated that the Kowalski Patent claims at issue do not specify any particular quantity of volatile compounds and therefore Ocean Duke’s argument that the Shih Patent produces some other amount of compounds did not preclude a finding of infringement. The next argument Ocean Duke made was that the processes of the two patents are different. The Kowalski Patent uses a tower purification system made up of ice, two cloth filters, and activated carbon, to remove chemical constituents of smoke and smoke particulates, thus producing super-purified smoke. According to Ocean Duke, the Shih Patent does not use anything close to that process. However, the Court found that Hawaii International Seafood presented enough evidence to establish a genuine issue of material fact. Hawaii International presented evidence that the Kowalski Patent claims a variety of filtration processes beyond the one described as the “best mode.†Hawaii International also provided evidence that Ocean Duke produced “filtered smoke,†so its process does not only produce carbon monoxide and water. Based on the above evidence, the Court found that Ocean Duke had failed to produce evidence that would preclude a finding of infringement or show that the evidence produced by Hawaii International failed to establish an issue of material fact to the patentee’s infringement claim.
FROM: Jennifer Deitz
DATE: November 25, 2007
RE: Patent Law Case Brief
Kowalski and Hawaii Int’l Seafood Inc., v. Ocean Duke Corp., 2007 U.S. Dist. LEXIS 86034
Decided: November 20, 2007
FACTS: Hawaii International Seafood, Inc. owns a patent titled “Process for Manufacturing Tasteless Super-Purified Smoke for Treating Seafood to be Frozen and Thawed,†U.S. Patent 5,972, 401. The patent was originally granted to Hawaii International’s President, William Kowalski on October 26, 1999. Hawaii International and Kowalski filed an infringement suit against Ocean Duke Corporation. Ocean Duke filed for summary judgment claiming that it had not infringed because its supplier uses a “completely different patented process†to treat products it sells, a process described in Patent No. 6, 331, 322, the Shih patent.
ISSUE: Whether there is no genuine issue of material fact that Ocean Duke infringed on Hawaii International Seafood’s patent, and thus should be entitled to summary judgment as a matter of law.
HOLDING: The U.S. District Court for the District of Hawaii dismissed Ocean Duke’s motion for summary judgment.
REASONING: The Court first stated that the only way an accused infringer may obtain summary judgment of non-infringement by: 1) “providing evidence that would preclude a finding of infringement,†or 2) “by showing that the evidence on file fails to establish a material issue of fact essential to the patentee’s case.†(Citing Novartis Corp. v. Ben Venue Laboratories, Inc., 271 F.3d 1043 (Fed. Cir. 2001)) Next the Court examined Ocean Duke’s argument that its supplier used a completely different process described in a different patent, the Shih Patent. Ocean Duke first claimed a difference in the “initial heating device and the materials used to generate the volatile compounds.†Ocean Duke argued that the Shih Patent involves a process of heating charcoal in a vacuum oven, to a temperature of 180 degrees Celsius and by contrast the Kowalski Patent burns sawdust, not charcoal at a temperature range of 204-501 degrees Celsius. The Court stated that it did not need to decide the motion on those grounds because a large amount evidence indicated that there was a genuine issue of material fact based on the November 19 Claims Construction Order. In that Order, the Court held that the phrase in the Kowalski Patent, “heating organic material to generate smoke†included not only sawdust but also any carbon-containing materials, including charcoal. The Court also stated that the Kowalski Patent claims at issue do not specify any particular quantity of volatile compounds and therefore Ocean Duke’s argument that the Shih Patent produces some other amount of compounds did not preclude a finding of infringement. The next argument Ocean Duke made was that the processes of the two patents are different. The Kowalski Patent uses a tower purification system made up of ice, two cloth filters, and activated carbon, to remove chemical constituents of smoke and smoke particulates, thus producing super-purified smoke. According to Ocean Duke, the Shih Patent does not use anything close to that process. However, the Court found that Hawaii International Seafood presented enough evidence to establish a genuine issue of material fact. Hawaii International presented evidence that the Kowalski Patent claims a variety of filtration processes beyond the one described as the “best mode.†Hawaii International also provided evidence that Ocean Duke produced “filtered smoke,†so its process does not only produce carbon monoxide and water. Based on the above evidence, the Court found that Ocean Duke had failed to produce evidence that would preclude a finding of infringement or show that the evidence produced by Hawaii International failed to establish an issue of material fact to the patentee’s infringement claim.