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July 8, 2009

Fishy

The single claim of 4,781,930 is a method of immersing fresh fish filet in vegetable oil, draining the oil off, sprinkling crumbs on it, then freezing it. If that sounds nasty, the patent case behind it is even nastier. Alfred and Paul Fraser, acting pro se, sued 11 companies over the expired patent. For the Frasers, upon a trip to the supermarket, having oil in the list of ingredients of a frozen fish product was enough to accuse infringement.

Alfred T. Fraser and Paul J. Fraser v. Van de Kamps et al (CAFC 2008-1562, 2009-1073, -1704, -1092, -1153) non-precedential

The litany of junk assertion begins with accused parties being out of business, bankrupt, or not served. Well, to give partial credit, in one instance, service went to the "girl at [the] front desk."

The patent laws prohibit recovery of damages for infringement committed more than six years before the filing of a complaint. 35 U.S.C. § 286. Because Appellants commenced this suit on September 12, 2006, any recoverable acts of infringement must have occurred after that date in 2000. The undisputed record shows that Midship was statutorily dissolved on May 16, 1999, and that it has not conducted any business since May 1999. Appellants state in a conclusory manner that the trial court was "wrong" to hold that § 286 precludes recovery against Midship, but offer no evidence to rebut the factual evidence clearly demonstrating the company's dissolution more than seven years before the initiation of this suit. The trial court thus properly granted summary judgment in favor of Midship.

With regard to Good Harbor, the company commenced proceedings under Chapter 11 of the Bankruptcy Code in the United States Bankruptcy Court for the District of Massachusetts on June 1, 2004... In their reply brief, Appellants complain that they were given no notice of the bankruptcy proceeding, as though notice were somehow relevant to the viability of their claim against the dissolved company. But Appellants offer no facts, let alone material facts, to rebut the district court's finding that their claims are statutorily foreclosed. Viewing the evidence in a light most favorable to Appellants, summary judgment in favor of Good Harbor was thus also proper.

In its July 10, 2008 order, the district court noted that UNFI was one of the defendants whose name Appellants had gotten wrong, and that Appellants' attempted service of UNFI had been improper and ineffective... The record indisputably shows that UNFI was never properly served with a summons and complaint in this matter, nor did UNFI waive service. The record shows, at best, that Appellants attempted to serve UNFI on September 5, 2007 by leaving copies of certain documents at the office of UNFI with an employee who did not fall into any of the categories of employees that could properly be served under the Federal Rules or the parallel state rules of procedure. The purported summons did not identify any individual by either name or title, was addressed to the non-existent entity "Natural Sea Natural Food Systems," and otherwise did not satisfy the specific dictates of Rule 4. Moreover, Appellants never filed a proof of service with the district court, despite many opportunities, warnings, and extensions of time to do so. Given Appellants' failure to avail themselves of every possible lenience to comply with Rule 4 and the district court's orders, the district court did not abuse its discretion in dismissing the plaintiff's complaint against UNFI.

Appellants also appear to appeal the district court's dismissal of their claims against defendant National Fish, though their arguments in this regard are unclear. As of August 28, 2007 - nearly one year after Appellants commenced this action - they had not effectuated service on National Fish. On August 28, 2007, the district court issued an order requiring Appellants to show cause by September 14, 2007 why their complaint against National Fish should not be dismissed. Appellants then filed an affidavit of service stating that they had served National Fish on or about September 4, 2007. However, the document indicated merely that service was made by leaving the summons and complaint with "girl at front desk." In its July 10, 2008 order, the district court dismissed the complaint against National Fish sua sponte.

Now to the substance, or lack thereof, regarding infringement.

Appellants' theory of infringement requires ignoring not only the precise order of steps of the claimed method, but entire claim elements altogether. As the district court correctly found, the prosecution history of the '930 patent requires respecting the order of the claimed steps. Appellants obtained allowance of their claim only after distinguishing the prior art based on the claimed step of immersing the fillet in oil for a period of five to ten minutes immediately following filleting.

As for literal infringement, the unrebutted record shows the complete absence of at least two limitations of the asserted claim in all the five appellees' processes. None of the five appellees immerse their frozen fish products in a vegetable oil for a period of 5 to 10 minutes at room temperature. Further, none of these appellees begin preparing frozen fish fillets using fresh fillets. Other than Roche Bros.' never-frozen products, all of the subject processing is done on already frozen fillets. Indeed, Appellants appear to have conceded at the conclusion of the district court's summary judgment hearing that their theory of infringement would have to rest on equivalents, rather than literal infringement. See Hr'g Tr. 49:8-10, Feb. 21, 2008 (". . . we wouldn't have been here unless we honestly felt that there was an equivalency to our situation . . . .").

[S]imply stating that there are disputed issues of fact regarding infringement by equivalents does not suffice to show that such issues actually exist. This court's review of the record shows that Appellants' theory of equivalents infringement rests on the false belief that the mere presence of vegetable oil in the list of ingredients in a fish product is sufficient to warrant liability - without consideration of the condition of the fish when processing begins, the required period of immersion, or the temperature of the oil and the fish. Appellants do not grapple at all with their statements during prosecution which the trial court properly held to limit the scope of their claims.

Finally, the issue of sanctions over arduous due diligence -

The district court noted that Appellants did not provide any of the defendants with any notice of their patent, that they did not question any defendant concerning the manner of fish processing, and in the case of Midship and Good Harbor, that they did not even inquire as to the existence of these defendants prior to bringing suit. The record shows that Appellants proceeded to file suit without ascertaining correct names of some defendants. Despite detailed letters from counsel for various defendants explaining their clients' processes and pointing out the differences between those processes and the patented process, Appellants continued to press forth the litigation. Appellants continued despite the district court's clear explanation at a hearing that they could not prove infringement merely by proving the presence of oil as an ingredient on the list of the products at issue.

As the district court found:
Plaintiffs have put defendants to great expense not only by bringing the lawsuit, but then prosecuting it with procedural misstep after procedural misstep and willful misunderstanding of the concept of infringement. Whether plaintiffs were ill-advised, ignorant or obstinate, they failed to heed ample evidence of the futility of their hunt and rejected numerous opportunities to reevaluate their untenable position.

Fraser v. High Liner Foods, Inc., No. 06-11644-RWZ, slip op. at 17 (D. Mass. July 10, 2008). This court has thoroughly reviewed the record and discerns no abuse of discretion in the district court's award of sanctions in the modest amount of $500 per defendant against Appellants.

Affirmed.

This sordid affair taints assertion of expired patents for oily fish fillet processing for all time. Grievous indeed.

Posted by Patent Hawk at July 8, 2009 3:20 PM | Litigation

Comments

Well, junk patents on stinky fish aside, here is a real dilemma with patent fishing expedition:

with many high-tech inventions it is extremely difficult to uncover infringement in final consumer products which incorporate thousands of components
Take cell phone, for example: there is a shitload of stuff contained in a tiny area of DSP chip
How do you know for sure if your patent is infringed ?
YOu can have suspicions based on the overall capabilities of device or service but to know for sure you would need to reverse-engineer the damn DSP chip - someting a small entity can't afford to do
Or you need to obtain the original source code and development documentation from the infringer.

So here is the dilemma: you may never know for sure if your patent is infringed until you sue the infringer and conduct the discovery process.
But there is always a possibility that your patent is not infringed or the infringer took care to avoid literal infringemnt by doing some clever workaround tactics

What do you do then ?

Go on a fishing trip ? Sue a bunch of companies with similar products in the hope that something sticks ?

What are the possible court sanctions if most of your patent infringement assertions do not stick ?
I'm sure court can punish attorney firm filing patent assertion junk but what about going pro se as an independent inventor?
Can those large corporations go after your personal assets for their attorney fees and expenses ?
What if you don't have any assets except for your asserted patent ?
Would it make perfect sense then to sue ALL of the potential infringers at one fell swoop to be done once and for all ?

Anybody here cares to elaborate ?

Posted by: angry dude at July 9, 2009 6:21 AM

angry dude,

"Would it make perfect sense then to sue ALL of the potential infringers at one fell swoop to be done once and for all ?" Yes.

It can be difficult to ascertain with certainty infringement prior to some discovery. Non-infringing companies always provide information, and argument, as to why they don't infringe. Upon that being shown, a reasonable plaintiff drops the non-infringers from the suit. (Been there, done that.) That was not what happened in the above Fraser matter.

Posted by: Patent Hawk at July 9, 2009 11:21 AM