Kemin holds patents related to purifying lutein that is is extracted from plants. A jury gave Kemin the verdict based on infringement under the doctrine of equivalents. The court then issued a permanent injunction and Pigmentos appealed.
The CAFC decision is essentially a lesson in reasoned deference — the CAFC affirmed each of the district court’s decisions and only overruled one evidentiary decision by the magistrate.
An interesting squib in the opinion involves the permanent injunction.
As is true in many patent cases, the defendant continued to modify its accused process throughout the litigation. Based on those changes, the district court agreed to shift the burden of proving non-infringement to the defendant. 35 U.S.C. 295 provides statutory support for burden shifting when there is “a substantial likelihood . . . that the [accused] product was made by the patented process” after the plaintiff shows “a reasonable effort to determine the process actually used in the production of the product and was unable so to determine.”
After the decision, Kemin argued that the permanent injunction should apply to “any process run by [the defendant] at any time through the date of the jury verdict.” Kemin’s reasoning was that Section 295 required the defendant to present non-infringement evidence about any of those processes — and its failure to do so should result in in an injunction to stop the activity. The CAFC disagreed — simply because the new processes could not lead to infringement because they did not use propylene glycol as required by the claim language. The court remanded for a determination of whether the new non-propylene glycol processes lead to infringement of another claim.
The unstated principle that emerges here is that Section 295 burden shifting cannot be used to capture clearly non-infringing activities even if the defense presents no evidence of the non-infringement.