Free Reply - District Court of Colorado - Colorado

Case 1:03-cv-02372-PSF-PAC

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Filed 09/02/2005

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO Civil Action No. 03-cv-2372-PSF-PAC JACK BARRECA Plaintiff, v. SOUTH BEACH BEVERAGE CO., INC.; LOTTE U.S.A.; and 7-ELEVEN, INC. Defendants.

DEFENDANTS' REPLY BRIEF REGARDING CLAIMS CONSTRUCTION

I.

INTRODUCTION

Plaintiff's supplemental brief offers a proposed construction of claim 9 of the '839 patent that is contrary to both the plain language of the claim itself and applicable law. When properly construed, claim 9 discloses a chewing gum with an active ingredient containing two, and only two, distinct components: (1) a metabolic enhancer that is of the type that increases a user's metabolism to achieve a higher caloric burn rate; and (2) a single component selected from a specific group of substances. When claim 9 is properly construed, it is evident that it cannot be infringed by the SoBe Energy gum. As such, Defendants should be granted summary judgment with respect to that claim. 1

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Defendants are also entitled to summary judgment on claim 9, as well as claims 1 and 11, on the

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With regard to Claim 11, Plaintiff's supplemental brief does not even attempt to refute or attack Defendants' proposed construction. Rather, Plaintiff merely re-asserts his position that claim 11 is infringed by the SoBe Energy gum. Given the Court's construction of the language of that claim and the undisputed evidence regarding the ingredients of the SoBe Energy gum, summary judgment is also proper as to claim 11. II. A. LAW AND ARGUMENT

The Proper Construction of Claim 9.

Plaintiff first claims that Defendants' proposed construction of claim 9 (a chewing gum with a two-component active ingredient) is erroneous because of the presence of the word "comprised" in the claim. See Plaintiff's Supplemental Brief at 3. Plaintiff is wrong. While the claim does use the term "comprised," it is not used in relation to the structure of the active ingredient, but rather with regard to the first, gum substance. As such, although this language allows for more than just gum to be in the first substance, it does not affect the analysis of what can make up the active ingredient. With regard to the structure of the active ingredient, claim 9 very clearly discloses that such active ingredient is a two component substance. Indeed, claim 9 does so by specifically numbering the two components of the active ingredient: [A]t least said first substance has active ingredients consisting essentially of (1) a metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate; and (2) a component selected from the group consisting of [various substances].

independent ground that Plaintiff has no admissible evidence to establish that any of the components of the SoBe Energy gum is a metabolic enhancer of the type that increases a user's metabolism to achieve a higher caloric burn rate. It appears that the Court did not grant summary judgment to Defendants on this ground only because Defendants had not yet moved to preclude Plaintiff from testifying as an expert. Because Plaintiff was never disclosed as an expert, never provided a written report of his opinions, and, in fact, does not have the requisite knowledge to be qualified as an expert, Defendants will soon be filing a motion to exclude any purported "expert" testimony from Plaintiff.

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'839 patent, claim 9 (emphasis added). Plaintiff cannot plausibly argue that claim 9 discloses a chewing gum with an active ingredient containing more than two compounds. The next claim construction issue raised by claim 9 is the use of the phrase "consisting essentially of." Although the legal standard for this phrase is well settled, Plaintiff offers a strained interpretation that is contrary to applicable law. Plaintiff essentially argues that adding additional ingredients beyond the two disclosed in claim 9 would not affect the basic and novel characteristics of claim 9. However, as Defendants previously pointed out, the United States Court of Customs and Patent Appeals (the predecessor to the Federal Circuit) has held that: [R]ecital of 'essentially' along with 'consisting of' (is regarded) as rendering the claim open only for the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition. . . . [W]here the claims recite three ingredients and the reference discloses four, the important question is whether the term 'consisting essentially of' excludes the fourth ingredient. We think that it does, since the 'modifier' materially changes the fundamental character of the three-ingredient composition. In re Janakirama-Rao, 317 F.2d 951, 952; 50 CCPA 1312 (1963)(quoting Ex parte Davis, 80 USPQ 448 (Pat.Off.Bd.App. 1948))(emphasis added). See also AFG Industries, Inc. v. Cardinal IG Co., Inc., 239 F.3d 1239, 1245 (Fed. Cir. 2001). Claim 9 recites two ingredients: a certain type of metabolic enhancer and a component selected from a group of substances. The reference in this case, the SoBe Energy gum, contains more than two ingredients, and thus cannot infringe claim 9. Just as the inclusion of the fourth ingredient in the In re Janakirama-Rao case changed the fundamental character of the threeingredient composition and took it outside of the scope of the claim at issue, the inclusion of more than two ingredients in the SoBe Energy gum changes the fundamental character of claim 9's two-ingredient composition and takes the SoBe Energy gum outside the scope of claim 9.

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B.

The Proper Construction of Claim 11.

In his supplemental brief, Plaintiff does not challenge Defendants' proposed construction of claim 11. It is therefore now undisputed that the active ingredient disclosed in claim 11 consists of the combination of guarana, ginseng, at least one vitamin, and more than one metabolic enhancer of the type that increases a user's metabolism in order to achieve a higher caloric burn rate. The question then becomes one of infringement. As this Court held as part of its

Markman Order in the '540 patent litigation, an accused product must contain more than one metabolic enhancer, and those multiple metabolic enhancers must be different from the other recited ingredients. See Barreca v. South Beach Beverage Co., 322 F.Supp.2d 1186, 1194 (2004)("The Court rejects any suggestion that the guarana, or ginseng, or both, satisfy the requirement that there be present in each claim 'metabolic enhancers.' Furthermore, since the phrase 'metabolic enhancers' is written in the plural the Court construes the phrase to require at least two metabolic enhancers as part of the active ingredient in addition to the guarana, or both the guarana and ginseng."). Plaintiff attempts to avoid the requirement that the alleged metabolic enhancers must be present in addition to the specific ingredients by arguing that caffeine should be considered a metabolic enhancer different from guarana. Plaintiff has already taken the position, however, that the only possible source of caffeine in the SoBe Energy gum is the guarana in the outer gum shell. See November 24, 2003 Expert Report On SoBe Energy Gum at 5 ("[I]n the absence of any indication on the SoBe Energy Gum label that there is any other possible source for the presence of caffeine in the gum, I believe I have a sound basis to conclude that the presence of caffeine in the center-fill of the gum is reflective of the admitted presence of guarana in the

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gum."). Consequently, Plaintiff cannot now argue that caffeine should be counted separately from guarana for purposes of satisfying the claim limitation found by the Court. In addition, Plaintiff has not presented any evidence of the alleged presence of caffeine in the outer gum shell. Rather, he has submitted test results allegedly showing the presence of caffeine in the liquid center-fill of the SoBe Energy gum. Thus, even if the Court were to allow Plaintiff to count caffeine as a metabolic enhancer different from guarana, and even if the Court were to assume that both taurine and caffeine are the type of metabolic enhancer at issue in claim 11, the lack of any actual evidence showing the presence of caffeine in the outer gum shell is fatal to Plaintiff's argument that the SoBe Energy gum infringes claim 11. III. CONCLUSION

Based on the foregoing, Defendants respectfully request that this Court adopt their proposed claim construction and enter an Order of summary judgment with regard to claims 9 and 11.

Dated: September 2, 2005

s/ Adam J. Brody Adam J. Brody Kevin Abraham Rynbrandt Varnum, Riddering, Schmidt & Howlett LLP P.O. Box 352 Grand Rapids, MI 49501-0352 Tel. (616) 336-6000 Fax: (616) 336-7000 Emails: [email protected] [email protected]

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and Michael L. Hutchinson, No. 20853 Treece, Alfrey, Musat & Bosworth, P.C. 999 18th Street, Suite 1600 Denver, CO 80202 Tel. (303) 292-2700 Fax: (303) 295-0414 Email: [email protected] for Defendants South Beach Beverage Company, Inc., 7-Eleven, Inc., and Lotte U.S.A., Inc.

CERTIFICATE OF SERVICE I hereby certify that on this 2nd day of September, 2005, I presented the foregoing to the Clerk of Court for filing and uploading to the CM/ECF system which will send notification of such filing to the email addresses of the following persons: Joseph E. Kovarik, Esq. ([email protected]) Robert Brunelli, Esq. ([email protected]) Sheridan Ross, P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141

s/Adam J. Brody Adam J. Brody (P62035)

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