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Federal Circuit Construes “Containing”, “Mixture”, and “Ingredients” in Chemical Patent Claims

By Joseph Waters

In Mars, Inc. v. H.J. Heinz Company, 2004 WL1687051 (Fed. Cir. 2004), published on July 29, 2004, the Federal Circuit provided some guidance with respect to the meaning of certain claim terms. Specifically, the Court construed the meaning of the terms “containing”, “mixture”, and “ingredients”. While there is some indication in the opinion that the meaning given to the terms may vary based on the context in which they are used, this opinion provides at least some guidance to attorneys drafting patent applications, especially those whose practice relates to the chemical arts in which these terms are commonly used.

Background
Mars filed suit against Heinz alleging infringement of U.S. Patent No. 6,312,746 directed to a dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell. Thirty-three claims of the '746 patent, including independent claims 1, 17, 25, 78 and 89, were asserted in the case. Claim 1 is representative:

1. A dual texture pet or animal food product comprising:
    a soft inner component of a dual texture pet or animal food product containing a mixture of lipid and solid ingredients,
    the first component having a water activity, aw, less than about 0.65 and a total moisture content less than about
    15 wt %; a cereal based shell component…

District Court Proceedings
At the Markman hearing, Mars argued that the "containing a mixture of lipid and solid ingredients" limitation means that the claimed "soft inner component" contains, but is not limited solely to, lipid and solid ingredients. Specifically, they argued that the terms "containing" and "mixture" are open-ended terms that do not exclude the presence of unlisted ingredients.

The district court disagreed and held that the limitation was close-ended and must include only lipid or solid ingredients. The court based its construction, in part, on statements in the specification indicating that the soft inner component should "not exceed 100 wt%" of lipids and solids and that "the most preferred embodiment comprises about 60 wt% solids and 40 wt% lipids”. This was in contrast with other limitations in the asserted claims use the term "containing at least." According to the district court, Mars’s “failure to use a qualifier, such as 'at least,' when referring to the soft inner component, yet including such a qualifier [for other limitations], indicates that Mars meant for the inner component to be exclusive of ingredients other than lipids and solids.”

Subsequently, both parties moved for summary judgement. Although not construed during the Markman hearing, Mars argued that "ingredients" should be construed to refer to either the starting materials or the end components of the finished product and that the "containing a mixture of lipid and solid ingredients" limitation was met because the end components of the accused finished product contained only lipids and solids.
In contrast, Heinz argued that the term "ingredients" referred only to the starting materials used to make the product. Because it was undisputed that water-based syrups, which were neither lipids nor solids, were used to make the inner component of the accused products, Heinz argued that the "containing a mixture of lipid and solid ingredients" limitation was not met as a matter of law and that, even if Mars’ construction was proper, summary judgement of non-infringement was proper because of the additional non-lipid, non-solid constituents of the inner component.
The district court granted Heinz’s motion for summary judgment of non-infringement and held that there was no literal infringement because "ingredients" referred only to the starting materials used to make the product, and Mars did not dispute that certain non-lipid, non-solid syrups were used to make the accused products. Further, there was no infringement under the doctrine of equivalents because "such application of the doctrine of equivalents would vitiate the 'containing a mixture of lipid and solid ingredients' limitation, and thereby run afoul of the all-limitations rule."

The Federal Circuit Decision
Mars subsequently appealed. In reviewing the district court decision, the Federal Circuit reiterated current claim construction analysis by stating that while dictionaries are one source for determining the ordinary meaning of a patent claim term, the specification must be examined in every case to determine which of the possible dictionary meanings is consistent with the use of the claim term in the context of the claims and the written description.
After consulting several dictionaries, the Court concluded that the ordinary definition of "ingredients" can refer to either starting materials or to the components of a mixture after they have been combined. The Court held that the use of the term in the specification did provide a basis for deviating from this construction, even though patent examples in the specification appeared to use "ingredients" to refer to starting materials, and the specification in other areas used "ingredients" to refer only to starting materials.

Next, the Court held that the terms "containing" and "mixture" in a patent claim containing the recitation "containing a mixture of lipid and solid ingredients" did not limit ingredients to only those ingredients listed in the claim itself; rather, the terms were open-ended and synonymous with “comprising” or “including”, thus permitting the use of additional, unnamed ingredients. This is in accord with the Manual of Patent Examining Procedure (MPEP) §2111.03 (8th ed.). The Court rejected the district court’s holding that the specification was inconsistent with the ordinary, open-ended meaning of the terms “containing” and “mixture”

The Court also rejected the argument that using the term "containing" to describe the inner component, as opposed to "containing at least," which was used to describe the outer shell, "indicates that Mars meant for the inner component to be exclusive of ingredients other than lipids and solids." The court stated that the phrase "at least" is not required to make the outer shell limitation open-ended. Instead it was included to simply make clear that not all, but "at least" one, of the listed ingredients must be present in the outer shell. The phrase "at least" does not appear in the inner component limitation because that limitation, as the parties admit, is drafted to require the presence of both lipid and solid ingredients.

About the author:
Joseph Waters is an associate at Fay, Sharpe, Fagan, Minnich, & McKee, LLP. He graduated from John Carroll University (B.S. in Chemistry) and Case Western Reserve University School of Law (J.D.). He is a patent attorney registered with the Supreme Court of Ohio and the U.S. Patent and Trademark Office and also practices in other intellectual property related matters including copyrights, trademarks and trade secrets.