Free Brief - District Court of Colorado - Colorado

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO

Civil Action No. 1:03-cv-02372-PSF-PAC JACK BARRECA Plaintiff, v. SOUTH BEACH BEVERAGE CO., INC.; LOTTE U.S.A; and 7-ELEVEN, INC. Defendants. ____________________________________________________________________________ PLAINTIFF'S SUPPLEMENTAL BRIEF IN RESPONSE TO DEFENDANTS' PROPOSED CONSTRUCTION OF CLAIMS 9 AND 11 OF THE `839 PATENT ____________________________________________________________________________ Plaintiff, by and through his attorneys, files this Supplemental Brief to Defendants Proposed Construction of Claims 9 and 11 of the `839 Patent. I. INTRODUCTION The Court denied "defendants' implicit motion for summary judgment as to claims 9 and 11, to the extent such request is made in defendants' Reply Brief." (Court Order, 8/9/05) For the reasons as set forth herein, Plaintiff respectfully submits that the Court was and is correct in denying Defendants' Motion. As the Court noted, Defendants" argue that there is no evidence that the SoBe Energy gum contains only two ingredients, which defendants assert to be a claim limitation of claim 9 of the `839 patent." (Court Order, 8/9/05) Defendants proposed construction of Claim 9 is incorrect. Properly construed, both claims 9 and 11 of the `839 patent are infringed.

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A. Claim Construction ­ Applicable Law Plaintiff incorporates by reference the legal authority cited in his prior motion for summary judgment relating to infringement of the `839 patent. Also, the Court previously construed claim terms set forth in the `540 patent. Those constructions have been affirmed on appeal. To the extent applicable, those constructions should apply in this case. In that regard, the indefinite article "a" (i.e. used in conjunction with the term "a metabolic enhancer...") should again be construed to mean "one or more." See Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999). Moreover, the term "consisting essentially of" signals that the invention necessarily includes the listed ingredients but is open to other ingredients that do not materially affect the basic and novel properties of the invention. See PPG industries v. Guardian Industries, 75 F.3d 1558 (Fed. Cir. 1996). II. PROPER CONSTRUCTION OF CLAIM 9 Claim 9 reads: A chewing gum consisting essentially of a first substance comprised of gum configured so as to have at least one cavity capable of retaining a liquid or semiliquid substance as a second substance, wherein at 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 chromium picolinate; nettles; bee pollen; ginger; mahuang; zinc; a vitamin; a stimulant; ginseng; green tea; guarana; lecithin; gota kola [, known as a Markush Group,]; and golden seal, said active ingredients together present in an amount up to 5 grams. (emphasis added)

Defendants argue for a claim construction that fails to acknowledge the use of the transitional phrases "comprised" and "consisting essentially of." "Proper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation."

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Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999); accord Phillips, 2005 U.S. App. LEXIS 13954, at *27 ("[T]he context in which a term is used in the asserted claim can be highly instructive.") For these reasons, Defendants' proposed construction is incorrect. Claim 9 of the `839 patent encompasses a first substance that is "comprised" (i.e. an open ended transitional phrase that permits other elements to be present) of gum, with at least such first substance having active ingredients "consisting essentially of" (a partially open ended transitional phrase that permits other elements to be present that do not materially affect the basic and novel characteristics of the invention): (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: a vitamin; a stimulant; ginseng; and guarana, i.e., the Markush group. The "active ingredients" together are present in an amount up to 5 grams. If only Claim 9's Markush group were at issue, Defendants would at least have a plausible argument that only one of the elements listed in that group is properly considered to be encompassed by claim 9. But claim 9 clearly does not solely include a Markush group. Instead, claim 9 requires the presence of one or more particular types of metabolic enhancers, which is present in combination with the other claim elements. The fact that claim 9 utilizes the open ended transitional phrase "comprised" to indicate that other elements can be present in "the first substance" means that Defendants are incorrect in limiting the scope of claim 9 to just a two component product. Furthermore, although claim 9 provides that "at least [the] first substance has active ingredients" (plural), which includes those listed in a Markush group, the Markush group

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language is preceded by the "partially open" transitional phrase "consisting essentially of". Thus, while one of the components contained in the Markush group must be present to satisfy the language of claim 9, there is no limitation on the presence of other elements that do not materially affect the basic and novel characteristics of the invention. The use of these transitional phrases in claim 9 demonstrates that the claim is not to be construed in a manner that excludes other ingredients, whether they are metabolic enhancers or something else. III. INFRINGEMENT OF CLAIM 9 BY THE SOBE ENERGY GUM There is no dispute that the Sobe Energy gum has a first substance comprised of gum configured so as to have at least one cavity capable of retaining a liquid or semi-liquid substance. There is also no dispute that the Sobe Energy gum contains in its gum base certain active ingredients, including guarana, ginseng and taurine (SoBe Answer, ¶22) and that such active ingredients are present in the gum base. There is therefore no dispute that two of the components (ginseng and guarana) that are specifically listed in claim 9's Markush group are present in the Sobe Energy gum. The only real infringement issues concern whether the SoBe Energy gum has "a" metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate and does the presence of other ingredients in the SoBe Energy gum preclude an infringement finding. Guarana is a "metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate." Proof of this can be found in Defendants' prior acknowledgements and the declaration of Mr. Barreca, one of ordinary skill in the art. Defendants previously acknowledged caffeine is a metabolic enhancer of the type that increases a user's metabolism to achieve a higher caloric burn rate. (Defendants' Reply in

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Support of Motion for Summary Judgment of Invalidity of the `540 patent, p.24). Defendants patent law expert also acquiesced in considering guarana as a metabolic enhancer. (See Anderson Report, p. 15). Defendants also acknowledge that caffeine is an active ingredient in guarana.1 As such, guarana is thus a metabolic enhancer of the type required by claim 9.2 Next, while admitting that taurine is an active ingredient present in the Sobe Energy gum, Defendants have denied that taurine is a metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate. Thus, accepting for the moment that Defendants' contentions are accurate, the question then becomes whether the presence of taurine materially affects the basic and novel characteristics of the invention disclosed in the `839 patent, and thus arguably takes the Sobe Energy gum outside the scope of Claim 9. Plaintiff contends that it does not, as demonstrated by the inclusion of many other ingredients in the patented gum (such as a those listed in Tables I and II, and the numerous other claims of the `839 patent, including "a stimulant", which Plaintiff contends also encompasses taurine). Additional ingredients as disclosed in the patent specification that may be present in the gum, clearly do not affect the novelty or basic characteristics of the invention described in the `839 patent (e.g. a diet and weight control gum). Notwithstanding the partially inclusive nature of the transitional phrase "consisting essentially of," because a proper construction of claim 9 does not preclude the presence of more

Caffeine occurs in guarana, as well as in tea, coffee, maté, kola nuts, and cacao. See Encyclopedia Britannica, 2003. 2 Defendants acknowledged that Lotte's own prior publication (Sato et al., "On Drowsiness Preventing Gum that Contains Guarana Extract, 1988") established that caffeine is a metabolic enhancer. (See Defendants' Reply to Motion for Summary Judgment re: validity of the `540 patent, p. 24.)

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than one metabolic enhancer, also raises the separate issue of whether taurine is the type of metabolic enhancer that increases a user's metabolism to achieve a higher caloric burn rate. Plaintiff submits that it is inherent in the term "metabolic enhancer" that a user's metabolism is increased. That a user's enhanced metabolism achieves a higher caloric burn rate is a question of fact for the jury. Evidence, including testimony from those of skill in the art,3 objective articles about the nature and effects of taurine, ginseng and ginsenosides, and the fact that taurine is an ubiquitous ingredient in various "energy" beverages such as Red Bull, Blue Ox, Venom, Hansen's Energy, Go Fast, Piranha and Mad Croc4, demonstrates that Defendants are not entitled to a finding of non-infringement in view of such outstanding genuine issues of material fact. It is notable that Defendants never admitted that Vitamin C is an "active ingredient" in the Sobe Energy gum. There is no dispute, however, that Vitamin C is present in the Sobe Energy gum and it is listed on the box of gum itself.5 Such a failure on Defendants part provides a tacit admission that Vitamin C is presumably not an "active ingredient" as such term is used in the `839 claims. In any event, as is the case with taurine, the presence of Vitamin C in the Sobe Energy gum does not remove the Sobe Energy gum from the proper scope of Claim 9. At minimum, Vitamin C must be seen as yet another element whose presence does not materially affect the basic and novel characteristics of the invention disclosed in the `839 patent.

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Rule 701 does not prohibit a witness from testifying to a matter "rationally based on their own perceptions and experience." Tampa Bay Shipbuilding & Repair v. Cedar Shipping Co., 320 F.3d 1213, 1221 (11th Cir. 2003). As the sole inventor of the `839 patented invention, Mr. Barreca has experience in describing the various embodiments of his invention, as well as to his perception as to what products infringe his claims and why. 4 See, e.g., Declaration of Jack Barreca and exhibits thereto, filed separately. 5 Because vitamin C constitutes a separate metabolic enhancer and Claim 1 of the `839 patent includes "a" (i.e.," at least one" metabolic enhancer), Defendants also infringe Claim 1.

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In other words, even under Defendants' improper construction of claim 9, Defendants still infringe because the Sobe Energy gum admittedly contains both (1) a metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate (i.e. guarana, due to its admitted inclusion of caffeine and the acknowledgment that caffeine is an "anticipatory" type of metabolic enhancer) and (2) one of the components listed in the Markush group (i.e. ginseng). The additional presence of taurine, which Defendants' have argued is not a metabolic enhancer, is merely an element permitted to be present within the confines of the transitional phrases "comprised" and/or "consisting essentially of." Similarly, Defendants have never admitted that Vitamin C is an active ingredient in the Sobe Energy gum, but even if it is, the above referenced transitional phrases certainly allow its presence in an infringing gum. This is because its presence in the gum does not materially affect the basic and novel characteristics of the diet and weight control gum invention disclosed in the `839 patent. There is no dispute as to the requisite amount of claimed active ingredients in the Sobe energy gum, thus satisfying the other claim limitation in all of the asserted `839 claims. IV. INFRINGEMENT OF CLAIM 11 BY THE SOBE ENERGY GUM In view of the above arguments and analysis, and taking into account the Court's existing claim construction of relevant terms, the sole issue with respect to infringement of Claim 11 relates to the presence of "metabolic enhancers" (plural). None of the above mentioned issues (i.e. with respect to the partially open transitional phrase "consisting essentially of" as it pertains to "active ingredients" or the presence of a Markush group as presented in claim 9) are presented with respect to claim 11. Claim 11 is as follows: A chewing gum consisting essentially of a first substance comprised of gum configured so as to have at least one cavity capable of retaining a liquid or semi-liquid substance as a

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second substance, wherein at least said first substance has active ingredients comprising at least a combination of the following: guarana, ginseng, at least one vitamin, and metabolic enhancers that increases a user's metabolism in order to achieve a higher caloric burn rate, in an amount of up to 5 grams.

Plaintiff contends that the Sobe Energy gum infringes claim 11 (either literally or under the doctrine of equivalents) because it admittedly possesses guarana, ginseng, Vitamin C, taurine and caffeine. Plaintiff submits that both taurine6 and caffeine are metabolic enhancers of the type encompassed by claim 11. Defendants have previously acknowledged that caffeine is a metabolic enhancer of the type recited in the claims (i.e. by arguing that certain chewing gum references teach the use of caffeine and thus constitute "anticipatory" references under 35 USC 102(b).7 It is undisputed that caffeine was found in the Sobe energy gum (despite the fact that Defendants contend that it was never added at the time of manufacture to the center-fill of the gum). Defendants have also made much ado about the fact that caffeine is distinct from guarana. (Defendants' Second Motion for Summary Judgment Regarding Infringement of the `540 patent, p. 12, "caffeine and guarana are not one and the same...."). Here, the admitted distinct identities and presence of caffeine and guarana in the Sobe Energy gum suffice to establish infringement of claim 11 because caffeine and taurine constitute metabolic enhancers that 7-Eleven previously admitted that taurine is a "metabolic enhancer" ­ but now apparently denies that taurine is the "type" of metabolic enhancer that increases a user's metabolism in order to achieve a higher caloric burn rate. In view of evidence previously presented (and in view of other evidence to be presented at trial, including testimony from one of ordinary skill in the art and also supported by various learned treatises) that taurine is indeed a type of metabolic enhancer that meets the claim limitations at issue here, there exist genuine issues of material fact that preclude a grant of non-infringement in Defendants' favor. 7 Anticipation under 35 USC 102 requires that a single prior art reference disclose every element of the claimed invention. Defendants previously argued that the ingredients disclosed in Sato, et al. anticipate the `540 claims (which are strikingly similar to those at issue here) because they comprise metabolic enhancers that increase a user's metabolism to achieve a higher caloric burn rate. 8
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increase a user's metabolism in order to achieve a higher caloric burn rate. See, e.g., Sunrise Medical MHHG, Inc. v. Airsep Corporation, 95 F.Supp. 2d 348, 449 (W.D.P.A. 2000)("One claim limitation may ... be read upon two elements of the accused structure.") As such, there exist genuine issues of material fact as to the presence of caffeine in the gum-based portion of the Sobe Energy gum, as well as to whether the admitted "metabolic enhancer" taurine is the type that can increase a user's metabolism in order to achieve a higher caloric burn rate. The Court or the jury must also determine whether Defendants infringe the `839 patent under the doctrine of equivalents by determining whether there are only insubstantial differences between the construed claims and the accused product. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Cir. 1998). The accused product's elements are equivalent to a claimed element if the differences between the two are "insubstantial" to one of ordinary skill in the art. Warner-Jenkins Co. v. Hilton Davis Chem. Co., 520 U.S. 17 at 39-40 (1997). Plaintiff provides the only evidence on this point. Previous uncontroverted laboratory tests on the Sobe Energy gum and Dr. Lantz' declarations (dated 12/12/03 and 6/28/04) established that the presence of four distinct ginsenosides in the gum was indicative of the presence of ginseng. Defendants have previously denied that such ginsenosides were ever placed in the center-fill of the gum at the time of manufacture and have also argued that ginsenosides themselves are distinct from ginseng. There is therefore an issue as to whether any one of the distinct ginsenosides found in the SoBe Energy gum are properly considered to be the type of "metabolic enhancers" at issue here, as well as to whether it is more probable than not that one or more of them is present in the "first substance." Testimony from Defendants' own expert, Mr. Fritz, concerning the inevitable exchange of

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materials that occurs in a center-filled gum, provides evidence that it is more likely than not that the ginsenosides admittedly present in the gum are in the "first substance." (See Fritz Expert Report in `540 litigation, p. 6). CONCLUSION If the Court adopts the claim construction proposed by Plaintiff, then summary judgment of infringement (either literal or under the doctrine of equivalents) is appropriate. If the Court adopts some other claim construction, then there will still be genuine issues of material fact relating to infringement that will require a trial on the merits. Issues, such as the ability of the sole inventor to testify as to the nature and scope of his invention, are the subject of other soon to be filed motions. For all the foregoing reasons, Plaintiff respectfully requests that the Court grant this motion. DATED: August 23, 2005 Respectfully submitted, s/ Joseph E. Kovarik Joseph E. Kovarik, Esq. ([email protected]) Robert R. Brunelli, Esq. ([email protected]) Sheridan Ross P.C. 1560 Broadway, Suite 1200 Denver, Colorado 80202 (303) 863-9700 ATTORNEYS FOR PLAINTIFF JACK BARRECA

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CERTIFICATE OF SERVICE

I hereby certify that on August 23, 2005, I electronically filed the foregoing with the Clerk of Court using the CM/ECF system which will send notification of such filing to the following e-mail addresses: [email protected] [email protected] [email protected] [email protected] [email protected] [email protected]

/s Kristin M. Heil Kristin M. Heil Assistant to Joseph E. Kovarik Attorney for Plaintiff SHERIDAN ROSS P.C. 1560 Broadway, Suite 1200 Denver, CO 80202-5141 Telephone: 303-863-9700 Facsimile: 303-863-0223 Email: [email protected] [email protected]

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