Tuesday, April 05, 2005

Return of the peanut butter and jelly sandwich patent?

We have mentioned the so-called "peanut butter and jelly" patent both in this blog (Nov. 2004) and in IPT (e.g., "It's bound to scare you boy," IPT (March 2003)). Back in 2001, Smuckers (which holds the rights in the patent (6,004,596) from MenuSaver; Menusaver assigned the patent to Smucker on December 22, 2000) was embroiled in a lawsuit over the patent, e.g., Albie's Foods v. Menusaver, Inc., 170 F. Supp. 2d 736 (E.D. Mich. 2001).
[Also: http://www.mied.uscourts.gov/_opinions/Lawsonpdf/DML01-10022.PDF]

The ED Mich case noted that Albie's filed a DJ action on January 11, 2001 (but may have named the wrong defendant). However, on May 16,
2001, an action was filed against Albie's in the Northern District of Ohio. The Michigan Court determined that the patent infringement
action in Ohio will adequately address the issues in the instant
case, the Court exercised its discretion and declined to exercise jurisdiction over this declaratory judgment action. Thus, Albie's ended up in court in Ohio, and the case later disappeared. The litigation attorney for Menusaver was Robert V. Vickers, Body,
Vickers, Cleveland, OH.

Of the procedural maneuvering, the Michigan court noted:
There is evidence of "procedural fencing" in the instant case.
Albie's admits that it filed the declaratory judgment action in January precisely to preserve its right to litigate in this district, which is where the plaintiff resides.
Albie's did not serve the lawsuit until May 4, 2001. Smucker filed the infringement action in Ohio, its home forum, twelve days later.

The Bay City Times news section of Michigan Live (www. mlive.com/ news/) reported on Jan. 20, 2001:

"Last summer, the folks at Albie's Foods here started making crust-free peanut butter-and-jelly sandwiches for their customers. Just before Christmas [2000], an executive with an Ohio food company ordered Albie's to bag 'em. Robert V. Vickers wrote to Albie's explaining that his company, Menusaver Inc., holds the patent for crustless PBJ and plans to preserve its exclusive rights to the lunchtime staple."

Although the swing patent (6,368,227) is gone, the sealed crustless sandwich patent apparently is not, and the CAFC will hear an appeal of a PTO rejection of a continuing application of 986,581 (filed Dec. 8, 1997), which gave rise to 6,004,596 in the case In re Kretchman. [Len C. Kretchman and David Geske are the inventors.]

An article by Sara Schaefer Munoz entitled "Patent No. 6,004,596: Peanut Butter and Jelly Sandwich" appears on pages B1, B9 of the April 5, 2005 issue of the Wall Street Journal, complete with a color picture of a Smucker's "Uncrustable" package and an Uncrustable with a bite taken out of it.

Adam Jaffe is quoted as saying "it is a patent that never should have been issued." Josh Lerner is quoted: "If something is important to the company, it's not unusual to see this type of full-court press."

The WSJ article notes that both parties (Albie's, Smucker) dismissed the litigation, "meanwhile, the company [Smucker]set out to expand the patent with new applications before the USPTO." One notes that Smucker would have needed to file a continuing application in 1999, before the '596 issued, to claim priority to the earlier case. The WSJ notes that the patent examiner handling the case denied the company's requests for broader protection on the sandwich's structure and process by which it is made. The WSJ states that court documents argue that the sealing method is one of a kind. The WSJ also notes that Smucker's attorneys brief says "this smashed edge [of prior art] is the antithesis of the surface-to-surface seal" formed in the Smucker process. There is also discussion in the WSJ article about a method for sandwiching the jelly between the peanut butter and bread.

I haven't seen the briefs. However, the claims of the earlier '596 patent are available. Reading between the lines, I believe that the claims at issue before the CAFC are narrower not broader than claim 1 of the '596. Also, merely as speculation, I note the art mentioned in the WSJ as cited against the continuing application would seem to render claim 1 of the parent '596 patent a dead man walking.

[As an aside, the WSJ improperly refers to the BPAI as the "Patent Office's Board of Trademark Appeals and Interferences."]

The first claim of the '596 recites:

A sealed crustless sandwich, comprising:

a first bread layer having a first perimeter surface coplanar to a contact surface;

at least one filling of an edible food juxtaposed to said contact surface;

a second bread layer juxtaposed to said at least one filling opposite of said first bread layer, wherein said second bread layer includes a second perimeter surface similar to said first perimeter surface;

a crimped edge directly between said first perimeter surface and said second perimeter surface for sealing said at least one filling between said first bread layer and said second bread layer;

wherein a crust portion of said first bread layer and said second bread layer has been removed.

Text of the '596 states:

In these respects, the sealed crustless sandwich according to the present invention substantially departs from the conventional concepts and designs of the prior art, and in so doing provides a sandwich primarily developed for the purpose of providing a convenient sandwich without an outer crust which can be stored for long periods of time without a central filling from leaking outwardly.

The abstract of the '596 states:

A sealed crustless sandwich for providing a convenient sandwich without an outer crust which can be stored for long periods of time without a central filling from leaking outwardly. The sandwich includes a lower bread portion, an upper bread portion, an upper filling and a lower filling between the lower and upper bread portions, a center filling sealed between the upper and lower fillings, and a crimped edge along an outer perimeter of the bread portions for sealing the fillings therebetween. The upper and lower fillings are preferably comprised of peanut butter and the center filling is comprised of at least jelly. The center filling is prevented from radiating outwardly into and through the bread portions from the surrounding peanut butter.

It has been asserted that there was uncited prior art: US 2,463,439, from March 1, 1949, teaches, a device for making sealed crustless sandwiches. Now, there was the CAFC case concerning a device to make certain shaped potato product; if the device to make the thing existed, then the thing itself existed.


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