By Clyde Shuman
A federal judge in Delaware has held that a patent directed to a method of producing pre-cooked sliced bacon on an industrial scale, does not specify how one should determine whether it resembles pan-fried bacon, thus rendering the patent invalid as indefinite.
In HIP Inc. v. Hormel Foods Corporation et al., case number 1:18-cv-00615 (D. Del.), plaintiff HIP sued Hormel and others for infringement of U.S. Patent No. 9,510,610, entitled “Process for producing precooked bacon slices.” Defendants counterclaimed, inter alia, that the ‘610 patent was invalid as indefinite, and moved for expedited summary judgment on that basis.
Granting Defendants’ motion, the court focused on language in the preamble to the two independent claims, namely, “[a] process … to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.” The court found that the claims did not define or otherwise clarify the scope of the disputed term “resembling a pan-fried bacon product,” and the patent’s specification provided two potential bases for determining whether precooked bacon “resembl[es] … pan-fried bacon.”
That is, although the specification described five “significant organaleptic [sic] differences between the product produced by a continuous microwave process versus a traditional home-fried product … [namely] different texture, mouth feel, bite, appearance, and color,” the specification did not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. In addition, the specification did not identify objective criteria to distinguish pan-fried bacon from microwaved bacon.
The court specifically referred to testimony from HIP’s expert, that the specification does not provide specific instruction for evaluating the five organoleptic characteristics to determine if a pre-cooked bacon product resembles a pan-fried bacon product, because ” [the patent] relies on the person of ordinary skill to do that.” The court also noted an admission by HIP’s expert, that there are no standards for determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon, nor could he articulate in a meaningful or helpful way what the texture, mouth feel, bite, appearance and color of pan-fried bacon are.
The court also rejected the potential criterion/measure: “[t]he resulting cooked product has a crispness, appearance, and degree of golden brown color which are substantially the same as a bacon product which has been pan fried at 500° F. for 5 minutes (i.e., 2.5 minutes per side),” finding that the specification “does not define-or explain in any way how to measure or assess-the bacon’s crispness, appearance, or degree of golden brown color…[n]or does it identify the characteristics of the pan or bacon used in [the example], even though [ ] those characteristics vary widely and affect substantially the crispness, appearance, and color of bacon fried in a pan.”
The court again turned to testimony of HIP’s expert, saying: “Although Mr. Corliss insisted that pan-fried bacon has a ‘certain’ taste, color, crispness, and aroma; he was never able to define or explain cogently the ‘certain’ taste, color, crispness, and aroma. His inability to do so makes sense, because, as he admitted, there are no ‘crispometers’ or other objective tools or criteria to measure or identify the ‘sensory parameters’ of pan-fried bacon.” Per the court, “[t]he absence of such tools and criteria makes ‘resembling … pan-fried bacon’ a term ‘that is purely subjective and depends on the unpredictable vagaries of any one person’s opinion.’”
