IP Law Daily, PATENT—N.D. Ill.: Method patents for frothing liquids with a plunger device were invalid for obviousness, (Apr 8, 2014)

By Thomas Long, J.D.

Meyer Intellectual Properties Limited cannot go forward with claims that milk frothers produced and sold by Bodum USA, Inc. infringed two method patents owned by Meyer, the federal district court in Chicago has ruled (Meyer Intellectual Properties Limited v. Bodum USA, Inc., April 7, 2014, Leinenweber, H.). Meyer’s patents were invalid for obviousness as a matter of law.

Meyer filed suit against Bodum for infringing U.S. Patent Nos. 5,780,087 (“the '087 Patent”) and 5,939,122 (“the '122 Patent”), both of which were directed to a method for frothing liquids such as milk without the use of a complicated steamer device. The patented method involved using a plunger to aerate liquid in a container with a height-to-diameter ratio of two to one. Bodum counterclaimed for declaratory judgment of noninfringement and invalidity.

After a trial, a verdict was rendered in Meyer’s favor for willful infringement, and Meyer was awarded $50,000 in damages. The trial judge, based on the willfulness finding, trebled the damages and awarded attorneys’ fees. Bodum appealed to the Federal Circuit, which reversed the judgment, holding that (1) Meyer had failed to prove that Bodum’s accused milk frothers infringed or induced infringement of the patents and (2) improper evidentiary rulings by the district court prevented Bodum from presenting its case that the patents were invalid for obviousness and inequitable conduct. The case was remanded to the district court.

On remand, Bodum moved for summary judgment of invalidity based on obviousness. Meyer moved for summary judgment of infringement and no inequitable conduct.

In the prior district court proceeding, the court excluded all of Bodum’s asserted prior art references except for one, the Ghidini Reissue Patent, No. RE 37,137, which described a method for frothing liquids. The court did not allow consideration of Bodum’s own 3-Cup French Press Coffee Maker, testimony by an expert witness, and testimony by Bodum’s CEO.

The Federal Circuit held that the district court erroneously narrowed the scope of prior art that Bodum could introduce at trial and prevented Bodum from using its primary piece of prior art—the Bodum 3-Cup French Press. In addition, in the Federal Circuit’s view, because the technology at issue was not complex, there was no basis to exclude the expert’s opinion that the patents-in-suit were obvious to one skilled in the art. That opinion, according to the appellate court, was based on “common sense,” and such a basis was appropriate in the analysis of a non-technical patent.

In its motion for summary judgment in the current proceeding, Bodum attached an updated opinion from its expert. The opinion included two references: the 1916 Belgium Patent No. 384,589, which taught how to froth liquids with a container and a plunger, and the Insta-Brewer, a coffee maker, which was similar to the Bodum 3-Cup French Press Coffee Maker but was sold as early as 1964.

Meyer moved to strike the updated report based on untimeliness and prejudice. The court denied the motion to strike, noting that the original expert report included both of these references, although they were not specifically included in the portion of the original report relating to the question of obviousness. In addition, the updated report was filed much earlier than 30 days prior to trial.

Even if the updated report were excluded, the “new” references could be considered under the law of the case, the court said. Lay witnesses in a non-technical case can testify to factual matters in helping the jury arrive at an opinion as to obviousness, as long as they do not express an opinion as to invalidity.

In the court’s view, there was ample evidence that the use of a plunger or piston to froth milk had been in use since at least 1916. The Ghidini Patent taught that a container of milk could be frothed using a plunger. The prior art Bodum 3-Cup French Press Coffee Maker included a container having a height-to-diameter ratio of at least 2 to 1, as claimed by the patents, as well as a screen and a spring positioned about the circumference of the plunger body. It would be reasonable for a person of ordinary skill in the art to combine these references, the court concluded.

Therefore, the '087 and '122 patents were obvious at a matter of law, in light of the Bodum 3-Cup French Press Coffee Maker and the Ghidini Reissue Patent. Summary judgment was rendered in favor of Bodum and against Meyer on the question of invalidity of the patents-in-suit based on obviousness.

Because the patents-in-suit were determined to be invalid, Meyer’s summary judgment motions regarding infringement and lack of inequitable conduct were denied as moot.

The case is No. 06 C 6329.

Attorneys: Anthony James Fuga (Holland & Knight LLP) for Meyer Intellectual Properties Limited and Meyer Corporation, U.S. David E. Bennett (Vedder Price PC) for Bodum, Inc.

Companies: Meyer Intellectual Properties Limited; Meyer Corporation, U.S.; Bodum, Inc.

Cases: Patent IllinoisNews