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HIP, Inc. v. Hormel Foods Corp.

United States District Court for the District of Delaware

June 24, 2019, Decided; June 24, 2019, Filed

Civil Action No. 18-615-CFC

Opinion

MEMORANDUM OPINION

June 24, 2019

Wilmington, Delaware

/s/ Colm F. Connolly

COLM F. CONNOLLY

UNITED STATES DISTRICT JUDGE

I. INTRODUCTION

Plaintiff HIP, Inc. sued Defendants for infringing U.S. Patent Number 9,510,610 (the "#610 patent"). Defendants alleged as counterclaims that the #610 patent is invalid due to indefiniteness and unenforceable due to inequitable conduct and incorrect inventorship. I permitted Defendants to move on an expedited basis for summary judgment on its counterclaim that the #610 patent is indefinite and consequently invalid under 35 U.S.C. § 112.1 See D.I. 115.

Defendants thereafter filed a motion for summary [*2]  judgment on indefiniteness. D.I. 116. The motion has been fully briefed.2 Both sides see fit to treat it as a motion for summary judgment even though they dispute certain facts, agree that it is within my discretion to make any subsidiary factual findings necessary to resolve the issue of indefiniteness, and rely on competing expert testimony adduced at a hearing on Defendants' motion. See Tr. of May 22, 2019 Hr'g at 6:10-13; 11:9-11; see also Tr. of Apr. 9, 2019 Hr'g at 80:16-17, 81:6-8. Federal Circuit decisions appear to confirm that I may grant summary judgment based on indefiniteness even when the parties present conflicting expert testimony about whether a person of ordinary skill in the art (POSITA) would be able to understand disputed claim terms. See, e.g., Capital Sec. Sys., Inc. v. NCR Corp., 725 F. App'x 952,958-59 (Fed. Cir. 2018) (affirming district court's decision granting summary judgment of indefiniteness despite expert testimony that a POSITA would understand the disputed claim term with reasonable certainty); cf. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244,1249-50 (Fed. Cir. 2008) (affirming grant of summary judgment of indefiniteness based on intrinsic evidence and noting in dictum that conflicting expert testimony does not preclude a finding of indefiniteness). Accordingly, I will treat Defendants' motion [*3]  as a summary judgment motion.

I have studied the parties' briefing and weighed the testimony of the parties' experts. For the reasons discussed below, I will grant Defendants' motion and declare the #610 patent to be invalid under § 112.

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2019 U.S. Dist. LEXIS 104970 *; 2019 U.S.P.Q.2D (BNA) 232481; 2019 WL 2579266

HIP, INC., Plaintiff, v. HORMEL FOODS CORPORATION, HORMEL FOODS CORPORATE SERVICES, LLC, OSCEOLA FOOD, LLC, ROCHELLE FOODS, LLC, and DOLD FOODS, LLC, Defendants.

Subsequent History: Affirmed by HIP, Inc. v. Hormel Foods Corp., 2020 U.S. App. LEXIS 7008 (Fed. Cir., Mar. 6, 2020)

CORE TERMS

bacon, pan-fried, indefiniteness, microwaved, texture, color, patent, mouth, appearance, resembles, summary judgment, cooked, bite, crispness, invalid, skill, pan, written description, precooked, depends, minutes