Yoon Ja Kim v. the Earthgrains Company (now Known As Sara Lee Bakery Group, Inc.)

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
YOON JA KIM,
Plaintiff-Appellant,
v.
THE EARTHGRAINS COMPANY
(NOW KNOWN AS SARA LEE BAKERY GROUP,
INC.),
Defendant-Appellee,
__________________________
2011-1242
__________________________
Appeal from the United States District Court for the
Northern District of Illinois in Case No. 01-CV-3895,
Magistrate Judge Susan E. Cox.
____________________________
Decided: December 9, 2011
____________________________
Y OON JA K IM, Park Ridge, Illinois, pro se.
CRAIG C. M ARTIN , Jenner & Block, LLP, of Chicago,
Illinois, for defendant-appellee. With him on the brief
were STEVEN R. T RYBUS and S ARA TONNIES H ORTON ; and
ELAINE J. G OLDENBERG , of Washington, DC.
__________________________

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KIM v. EARTHGRAINS CO 2
Before LOURIE, BRYSON , and MOORE, Circuit Judges.
LOURIE, Circuit Judge.
Yoon Ja Kim appeals from the district court’s judg-
ment of noninfringement in favor of The Earthgrains
Company, now known as Sara Lee Bakery Group, Inc.
(“Sara Lee”). In this appeal, Kim challenges, among other
issues, the district court’s claim construction, its conclu-
sion that Kim failed to raise a genuine issue of material
fact on the issue of infringement, and its determination of
the applicable damages period. Because the district court
did not err in its decision, we affirm.
BACKGROUND
I.
This patent case relates to oxidizing agents used in
bread dough. Traditionally, bread makers used potas-
sium bromate as an oxidizing agent to strengthen bread
dough and increase the volume of the finished bread
product. The use of potassium bromate, however, was
associated with certain health risks, and the Food and
Drug Administration encouraged the baking industry to
seek suitable alternatives.
Kim, a food chemist, believed that a combination of
ascorbic acid and a “food acid” would serve as a suitable
alternative to potassium bromate in the bread making
process, and applied for a patent on that composition,
which the U.S. Patent & Trademark Office (“PTO”) issued
in 1996. Three years later, after completing reissue
proceedings, the PTO issued the patent in suit, U.S.
Patent Re. 36,355 (“the ’355 patent”).
The ’355 patent relates to a composition, referred to in
the patent as a “potassium bromate replacer,” for use as a
substitute for potassium bromate. Specifically, the ’355

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KIM v. EARTHGRAINS CO 3
patent upon issuance claimed a “potassium bromate
replacer composition consisting essentially of” a number
of ingredients by weight. Claim 5 of the ’355 patent,
reproduced below, is exemplary:
5. A potassium bromate replacer composi-
tion consisting essentially of, by
weight:
(a) about 0.001 to 0.03 parts ascorbic acid
as an oxidant per 100 parts flour,
(b) about 0.015 to 0.2 parts food acid per
100 parts flour, said food acid se-
lected from the group consisting
of acetic acid, citric acid, fumaric
acid, lactic acid, malic acid, oxalic
acid, phosphoric acid, succinic
acid, tartaric acid, fruit juice, fruit
juice concentrate, vinegar, wine,
and mixtures thereof, and
(c) flour.
’355 patent, col.8 ll.47–57 (emphasis added). Each claim
of the ’355 patent contained the “consisting essentially of”
limitation upon issuance.
Kim thereafter asserted the ’355 patent in litigation.
Upon request by one of the alleged infringers, the PTO
reexamined the ’355 patent. Kim v. Earthgrains Co., No.
1:01-CV-3895, 2010 WL 625220, at *1 (N.D. Ill. Feb. 18,
2010) (“Intervening Rights Order”). During the reexami-
nation, the PTO examiner found that the asserted claims
were not patentable in light of two prior art references.
Id. at *2. In response, Kim amended the asserted claims
in two ways. First, she replaced the “consisting essen-
tially of” transitional phrase with “consisting of.” Id. In
addition, Kim narrowed the claimed “food acid” to those

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KIM v. EARTHGRAINS CO 4
food acids that are “present in an effective amount that
slows down oxidation of ascorbic acid to dehydroascorbic
acid during a manufacturing process of yeast-leavened
products.” Id. The PTO allowed the amended claims, and
the examiner’s accompanying remarks indicate that the
amendments were necessary to overcome the prior art.
Id. Shortly thereafter, the PTO issued the reexamination
certificate on March 31, 2009. Id.
II.
Kim filed suit against Sara Lee in 2001, alleging that
a variety of breads sold by Sara Lee contained potassium
bromate replacer compounds that infringed a number of
the ’355 patent’s claims. In 2002, the district court con-
cluded on summary judgment that the asserted claims
were anticipated, a decision that we reversed on appeal.
See Kim v. Earthgrains Co., 60 F.App’x 270 (Fed. Cir.
2003). The parties then litigated the case for over seven
years on remand. In the course of the litigation, the
district court made a number of rulings that Kim now
challenges on appeal.
First, the district court determined on summary
judgment that intervening rights applied under 35 U.S.C.
§ 252 and § 307(b) because Kim substantively changed the
scope of the ’355 patent’s claims during the reexamination
by replacing “consisting essentially of” with the more
narrow “consisting of” transitional phrase. Intervening
Rights Order, 2010 WL 625220, at *4–*5. Accordingly,
the district court concluded that Kim was not entitled to
damages for alleged infringement that occurred prior to
March 31, 2009 when the PTO issued the reexamination
certificate. Id. at *5.
Second, with regard to the six products that Sara Lee
made, used, offered for sale, or sold after March 31, 2009,
the district court concluded on summary judgment that

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KIM v. EARTHGRAINS CO 5
those products did not infringe the asserted claims. Kim
v. Earthgrains Co., 766 F. Supp. 2d 866, 876–77 (N.D. Ill.
2011) (“Summary Judgment Order”). In so concluding,
the court construed numerous claim limitations, specifi-
cally “potassium bromate replacer composition, consisting
of”; “ascorbic acid”; “said food acid is present in an effec-
tive amount”; “said food acid selected from the group
consisting of acetic acid . . . [and] vinegar”; and “flour.”
Id. at 871–73.
After construing the claims, the district court con-
cluded that there was no genuine issue of material fact
that the accused Sara Lee products do not infringe for two
reasons. First, the district court concluded that Kim
failed to proffer sufficient evidence that the accused
potassium bromate replacers contained “ascorbic acid,” as
the parties agreed that term should be construed, in the
claimed “about 0.001 to 0.03 parts . . . per 100 parts flour”
concentration. Id. at 875–76. Second, the district court
concluded that there was no genuine issue of material fact
that the “food acid” in the alleged potassium bromate
replacer in five of the six accused breads exceeded the
“about 0.015 to 0.02 parts per 100 parts flour” range
recited in the asserted claims. Id. at 876–77.
The district court thereafter entered a final judgment
against Kim, which Kim timely appealed. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(1).
D ISCUSSION
Kim appeals the district court’s grant of summary
judgment regarding intervening rights and noninfringe-
ment, as well as the district court’s underlying claim
construction. We review a district court’s decision on
summary judgment de novo, reapplying the same stan-
dard applied by the district court. Iovate Health Scis.,
Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586

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KIM v. EARTHGRAINS CO 6
F.3d 1376, 1380 (Fed. Cir. 2009). Summary judgment is
appropriate only “if the movant shows that there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” FED . R. CIV. P.
56(a).
I.
On appeal, Kim asserts that the district court erred in
determining that the amendments of the asserted claims
triggered intervening rights and precluded Kim’s recovery
of damages for infringement that occurred prior to the
issuance of the reexamination certificate. A patentee of a
reexamined patent is entitled to infringement damages,
inter alia, for the period between the date of issuance of
the original claims and the date of issuance of the reex-
amined claims only if the reexamined claims are “identi-
cal” to, i.e., “without substantive change” from, the
original claims. Laitram Corp. v. NEC Corp., 163 F.3d
1342, 1346 (Fed. Cir. 1998). If the patentee made sub-
stantive changes to the original claims, the patentee is
entitled to infringement damages only for the period
following the issuance of the reexamination certificate.
Id. Because this inquiry requires us to interpret the scope
of the claims as they existed pre- and post-reexamination,
we review de novo a district court’s conclusion whether
the claims that emerged from reexamination are substan-
tively the same as the original claims. Id. at 1346–47;
Cybor v. FAS Tech., Inc., 138 F.3d 1448, 1451 (Fed. Cir.
1998) (en banc).
Kim argues that the scope of the claims did not
change when she replaced the “consisting essentially of”
transitional phrase with “consisting of” because the
claims still cover the same inventive subject matter. This
argument is unsound. Generally, the transitional phrases
“consisting of” and “consisting essentially of” designate

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KIM v. EARTHGRAINS CO 7
claims that are different in scope. The phrase “consisting
of” is a “closed” transition phrase that is “understood to
exclude any elements, steps, or ingredients not specified
in the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239
F.3d 1239, 1244–45 (Fed. Cir. 2001). In contrast, the
phrase “consisting essentially of” indicates that “the
invention necessarily includes the listed ingredients,” but
also that the claim is “open to unlisted ingredients that do
not materially affect the basic and novel properties of the
invention.” PPG Indus. v. Guardian Indus. Corp., 156
F.3d 1351, 1354 (Fed. Cir. 1998). Thus, a “consisting
essentially of” claim is generally broader than a “consist-
ing of” claim.
Kim fails to offer any cogent reason why the phrases
“consisting of” and “consisting essentially of,” in her
patent, are of identical scope. Why, if the claims are of
identical scope, did she amend them? Nothing in the
intrinsic record indicates that these terms, contrary to
general convention, are identical in substance. Indeed,
the reexamination record supports the district court’s
contrary conclusion—Kim deleted the word “essentially”
to obtain allowance in response to the PTO’s finding that
the prior art rendered the “consisting essentially of”
claims unpatentable. See Intervening Rights Order, 2010
WL 625220, at *2.
In addition, Kim’s deletion of the word “essentially”
was not the only change that she made to the claims
during the reexamination proceeding. As detailed above,
Kim also narrowed the claimed “food acid” to those food
acids that are “present in an effective amount that slows
down oxidation of ascorbic acid to dehydroascorbic acid
during a manufacturing process of yeast-leavened prod-
ucts.” Id. On appeal, Kim fails to address this added
limitation, which also appears to be a substantive change
in the scope of the asserted claims. Indeed, the exam-

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KIM v. EARTHGRAINS CO 8
iner’s notes indicate that Kim’s addition of this limitation
was also required for the claims to overcome the prior art.
Intervening Rights Order, 2010 WL 625220, at *2. In
sum, the district court did not err in concluding that Kim
was not entitled to damages for alleged infringement
occurring prior to March 31, 2009 when the PTO issued
the reexamination certificate for the ’355 patent.
II.
Kim also appeals the district court’s determination
that there was no genuine issue of material fact that the
accused potassium bromate replacers in the six breads
made, used, offered for sale, or sold after issuance of the
reexamination certificate do not infringe the asserted
claims. A determination of infringement involves two
steps: First, the court determines the scope and meaning
of the asserted patent claims. The fact-finder then com-
pares the properly construed claims to the allegedly
infringing device or substance to determine whether all of
the claim limitations are present, either literally or by a
substantial equivalent. Cybor, 138 F.3d at 1454. The
first step, claim construction, is a question of law, re-
viewed de novo. Id. (citing Markman v. Westview Instru-
ments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc)).
The second step, infringement is a question of fact, on
which the patentee bears the burden of proof. Bai v. L &
L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).
Accordingly, a court may determine infringement on
summary judgment “when no reasonable jury could find
that every limitation recited in the properly construed
claim either is or is not found in the accused device.” Id.
Kim challenges each of the district court’s claim con-
structions as well as the district court’s conclusion that
Kim failed to raise a genuine issue of material fact on the
issue of infringement. Because we conclude that the

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KIM v. EARTHGRAINS CO 9
district court correctly concluded that Kim failed to raise
a genuine dispute of material fact that the accused potas-
sium bromate replacers contained the claimed amount of
“ascorbic acid” by weight, we decline to address her argu-
ments.
In the district court, the parties agreed that the con-
struction of “ascorbic acid” is “ascorbic acid – also known
as vitamin C or L-ascorbic acid – is a water soluble vita-
min that is found in fruits and vegetables and is reversi-
bly oxidized to dehydroascorbic acid [DHA].” Summary
Judgment Order, 766 F. Supp. 2d at 875–76. The parties’
construction included the chemical formula for ascorbic
acid, C6 H 8 O 6 . Id. at 876. Inherent in this agreed-upon
construction, as the district court concluded, is that the
amount of “ascorbic acid” in the claimed mixture does not
include DHA. Id.
Kim argues on appeal that the manufacturer’s specifi-
cation for a tablet sold by Sara Lee’s suppliers is sufficient
to raise a genuine issue of material fact that the ascorbic
acid within the accused potassium bromate replacers falls
within the “about 0.001 to 0.03 parts ascorbic acid as an
oxidant per 100 parts flour” range in the asserted claims.
As the district court concluded, however, it is undisputed
that the ascorbic acid in the tablets is itself oxidized prior
to combining with the other ingredients that Kim alleges
constitute the claimed potassium bromate replacer in the
accused breads. Id. The parties also do not dispute that
through oxidation, ascorbic acid is transformed into DHA,
and potentially diketogulonic acid, changing the amount
of ascorbic acid that exists in a given mixture. Id. Thus,
as the district court concluded, “although the amount of
ascorbic acid, which is present prior to the dissolution of
the tablets in the water, is known, it is not known how
much ascorbic acid continues to be present once those

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KIM v. EARTHGRAINS CO 10
tablets are dissolved and the conversion of the ascorbic
acid begins.” Id.
Kim fails to point to any record evidence that the
amount of ascorbic acid, after the tablet is dissolved in
water and combined with flour and the “food acid,” falls
within the claimed range. In her brief and declaration,
Kim demonstrates that the concentration of ascorbic acid
in the tablet can be converted from parts per million to
parts per 100 of flour. But that calculation does not
sufficiently indicate the relative weight of the ascorbic
acid when it is ultimately combined with flour and the
accused “food acid,” as in the claim. Thus, the district
court did not err in concluding that Kim failed to raise a
genuine issue of material fact on the issue of infringe-
ment.
CONCLUSION
We have considered Kim’s remaining arguments and
conclude that they are without merit. For the foregoing
reasons, the order of the district court is
AFFIRMED

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