Tuna Processors Inc. (TPI) v. Hawaii International Seafood (HISI) and William R. Kowalski (CAFC 2008-1410, -1435) non-precedential

Upon claim construction, the Hawaii district court had found non-infringement. The CAFC appeal agreed.

5,484,619, entitled "Method for Curing Fish and Meat by Extra-Low Temperature Smoking," was assigned to Tuna Processors.

TPI, a holding company based in California, was created by several Philippine-based tuna exporters in order to administer the '619 patent.

Kowalski is the sole owner of Hawaii International Seafood, Inc. ("Hawaii Int'l"), a company that imports sushi grade tuna into the United States.

Kowalski took a license to '619, and was instantly sued when the license expired.

The district court cleared the smoke around the claims.

First, the court found that the phrase "burning a smoking material at 250° to 400° C" refers to the temperature of the medium in which the smoking material is burned, not to the temperature of the smoking material itself. Tuna Processors, 2007 U.S. Dist. LEXIS 77396 at *11. In so finding, the court noted that while the claim language and the specification were "ambiguous" on this point, the extrinsic evidence was "decisive." Id. at *10-*11.

Second, the district court construed the step of "passing the produced smoke through a filter to remove mainly the tar therefrom" as only applying to filtration processes that did not filter "flavor-giving particles out of the smoke." Id. at *18. As support for its construction of the filtration step, the court relied on both the language of claim 1 and the specification's description of imparting flavor through its smoking method.

Lastly, the court construed the step of "exposure to the smoke cooled to between 0° and 5° C" as occurring after the smoke "has already been cooled . . . to between 0° and 5° C." Id. at *20. The court relied heavily on the plain language of the claim itself in reaching its construction of that limitation.

After that, the parties stipulated non-infringement, which the district court blessed. Nonetheless, TIP appealed, against heavy wave action.

Because TPI has conceded that HISI's products do not infringe any of the three disputed claims as construed by the district court, we must reverse all three constructions in order for TPI to succeed in its appeal.

Most importantly, the smoke must cool. The district court put some time into the claim (literally) for this to happen. Introducing inherent delay was not untoward.

We agree with HISI that to infringe the '619 patent, a method must cool the smoke before the smoke contacts the tuna. The plain language of claim 1 demonstrates that the district court was correct in placing a temporal limitation on the steps of the smoking method. As the district court noted, this case is one in which the "sequential nature of the claim steps is apparent from the plain meaning of the claim language and nothing in the written description suggests otherwise." Tuna Processors, 2007 U.S. Dist. LEXIS 77396 at *19 (quoting Interactive Gift Exp., Inc. v. Compuserve, Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)).

The CAFC approved, upon inspection of repeated use of past participles, about filtering smoke after the smoke had been produced. And so on.

The use of the past participle confirms that the smoke must be produced prior to being filtered... In other words, "the smoke produced" must have been produced prior to filtration, just as the "smoke passed through the filter" must have been filtered prior to being cooled. In the same manner, the use of the past participle in "the smoke cooled" in the disputed third step requires that the smoke have been cooled prior to contacting the tuna meat for infringement to occur.

Numerous other references in the specification confirm this sequential ordering of steps.

TPI tried to blow smoke.

The '619 patent is concerned with creating smoke having a particular temperature, preservative ability, and flavor in order to optimally cure tuna fish. TPI's claim that a new type of smoke is introduced during the last step of the process runs contrary to the entire purpose and design of the '619 patent and its claims. It simply is an attempt to cloud the issue.

In light of all of the above, we conclude that the third step of claim 1 of the '619 patent must occur after the smoke has been cooled to between 0° and 5° C for infringement to exist.

As HISI was smoking hot, relatively speaking, non-infringement affirmed.