                         NOTE: This disposition is nonprecedential.


   United States Court of Appeals for the Federal Circuit
                                      2008-1410, -1435

                                TUNA PROCESSORS, INC.,

                                                       Plaintiff/Counterclaim Defendant-
                                                       Appellant,

                                               v.

                        HAWAII INTERNATIONAL SEAFOOD, INC.,

                                                       Defendant/Counterclaimant-
                                                       Cross Appellant,

                                             and

                                   WILLIAM R. KOWALSKI,

                                                       Counterclaimant-Cross Appellant.


        Michael S. Elliott, Crowell Ing, LLP, of Salem, Oregon, argued for
plaintiff/counterclaim defendant-appellant. With him on the brief were Carl D. Crowell,
Michelle L.H. Ing and R. Grant Cook. Of counsel was Paul Alston and Louise K.Y. Ing,
Alston, Hunt, Floyd & Ing, of Honolulu, Hawaii.

       Milton M. Yasunaga, Cades Schutte LLP, of Honolulu, Hawaii argued for
defendant/counterclaimant-cross appellant and counterclaimant-cross appellant. With him on
the brief was Allison Mizuo Lee.

Appealed from: United States District Court for the District of Hawaii

Magistrate Judge Barry M. Kurren
                         NOTE: This disposition is nonprecedential.


United States Court of Appeals for the Federal Circuit
                                    2008-1410, -1435


                              TUNA PROCESSORS, INC.,

                                                       Plaintiff/Counterclaim Defendant-
                                                       Appellant,

                                            v.

                     HAWAII INTERNATIONAL SEAFOOD, INC.,

                                                       Defendant/Counterclaimant-
                                                       Cross Appellant,

                                           and

                                WILLIAM R. KOWALSKI,

                                                       Counterclaimant-Cross Appellant.


      Appeals from the United States District Court for the District of Hawaii in
      Case No. 05-CV-00517, Magistrate Judge Barry M. Kurren.
                             ____________________


                                DECIDED: April 23, 2009
                                ____________________

Before LOURIE, ARCHER, and LINN, Circuit Judges.

LOURIE, Circuit Judge.

      In a patent infringement suit between Tuna Processors, Inc. (“TPI”) and Hawaii

International Seafood, Inc., et al., the United States District Court for the District of

Hawaii entered an order construing certain claims of TPI’s U.S. Patent 5,484,619 (“the

’619 patent”). Tuna Processors, Inc. v. Haw. Int’l Seafood, Inc., No. 05-cv-00517, 2007
U.S. Dist. LEXIS 77396 (D. Haw. Oct. 17, 2007). Following claim construction, the

parties entered into a stipulated judgment of noninfringement. The district court then

entered a final judgment of noninfringement, from which TPI now appeals. See Tuna

Processors, Inc. v. Haw. Int’l Seafood, Inc., No. 05-cv-00517, Stipulation for Entry of

Final J. and Order (D. Haw. May 7, 2008) (Dkt. No. 193) (“Stipulated Final Judgment”).

Hawaii International Seafood, Inc. and William Kowalski (collectively, “HISI”) cross-

appeal from the district court’s denial of their motion for partial summary judgment. See

Tuna Processors, Inc. v. Haw. Int’l Seafood, Inc., No. 05-cv-00517, 2006 U.S. Dist.

LEXIS 76885 (D. Haw. Oct. 17, 2006). Because the court correctly entered judgment of

noninfringement, we affirm. HISI’s cross-appeal is moot.

                                     BACKGROUND

       The tuna fish enjoyed by U.S. diners is often caught in and shipped from distant

locations.   Given the relatively long travel time required to deliver tuna to U.S.

consumers, importers seek out ways of preserving the fresh look and taste of their fish.

This case involves a patent dispute that centers on a method of curing tuna fish meat

using cooled smoke.

       Kowalski is the sole owner of Hawaii International Seafood, Inc. (“Hawaii Int’l”), a

company that imports sushi grade tuna into the United States. Kowalski is also the

owner of U.S. Patent 5,972,401, entitled “Process for Manufacturing Tasteless Super-

Purified Smoke for Treating Seafood to be Frozen and Thawed.” Kowalski licenses his

patented method to Hawaii Int’l, as well as other companies involved in curing tuna.

       The ’619 patent, entitled “Method for Curing Fish and Meat by Extra-Low

Temperature Smoking,” issued to Kanemitsu Yamaoka, among others, on January 16,




2008-1410, -1435                            2
1996. Claim 1 of the ’619 patent reads as follows:

       A method for curing raw tuna meat by extra-low temperature smoking
       comprising the steps of:

          burning a smoking material at 250° to 400° C. and passing the
             produced smoke through a filter to remove mainly tar therefrom;

          cooling the smoke passed through the filter in a cooling unit to between
             0° and 5° C. while retaining ingredients exerting highly preservative
             and sterilizing effects; and

          smoking the tuna meat at extra-low temperatures by exposure to the
            smoke cooled to between 0° and 5° C.

       Shortly after the issuance of the ’619 patent, Yamaoka and Kowalski entered into

a nonexclusive license agreement that permitted Kowalski to use the invention. The

license agreement stated that Kowalski did not believe that he was “infring[ing] on any

valid claims of the [’619] Patent,” but that he was obtaining a license agreement “in

order to prevent the Other Inventors [of the ’619 patent] from asserting . . . unlicensed

infringements on the Patent.” The license agreement ran through December 10, 2004.

       On January 15, 2003, the ’619 patent, as well as the rights under the license

agreement between Yamaoka and Kowalski, were assigned to TPI.             TPI, a holding

company based in California, was created by several Philippine-based tuna exporters in

order to administer the ’619 patent. On the day that Kowalski’s license expired, TPI

filed an infringement action against HISI in the United States District Court for the

Eastern District of Michigan. HISI successfully moved for transfer of the case to the

United States District Court for the District of Hawaii.

       Following transfer of the case, HISI moved for partial summary judgment of

noninfringement and requested an order barring TPI from asserting the doctrine of

equivalents against HISI. In that motion, HISI argued that the “disclosure-dedication



2008-1410, -1435                              3
rule” limited the ’619 patent to smoke produced between 250° and 400° C. According to

HISI, the disclosure-dedication rule applied because the claims of the ’619 patent were

limited to smoke produced between 250° C and 400° C while the specification described

smoke temperatures outside of that range. Tuna Processors, 2006 U.S. Dist. LEXIS

76885, at *11-*12.    The district court denied HISI’s motion for summary judgment,

finding that there were material facts that needed to be ascertained before infringement

could be determined. Id. at *14-*15. Furthermore, the court declined to construe the

claims of the ’619 patent at that time.         Id.   The court denied HISI’s motion for

reconsideration, finding again that the disclosure-dedication rule did not apply and that

the court had not erred in failing to enjoin TPI from asserting any doctrine of equivalents

argument. Tuna Processors v. Haw. Int’l Seafood, Inc., No. 05-cv-00517, 2007 U.S.

Dist. LEXIS 28135 at *12-*13 (D. Haw. Apr. 16, 2007).

       On October 17, 2007, the district court issued its claim construction order for the

’619 patent.   That order contained three constructions that form the basis of TPI’s

present appeal. First, the court found that the phrase “burning a smoking material at

250° to 400° C” refers to the temperature of the medium in which the smoking material

is burned, not to the temperature of the smoking material itself. Tuna Processors, 2007

U.S. Dist. LEXIS 77396 at *11. In so finding, the court noted that while the claim

language and the specification were “ambiguous” on this point, the extrinsic evidence

was “decisive.” Id. at *10-*11.

       Second, the district court construed the step of “passing the produced smoke

through a filter to remove mainly the tar therefrom” as only applying to filtration

processes that did not filter “flavor-giving particles out of the smoke.” Id. at *18. As




2008-1410, -1435                            4
support for its construction of the filtration step, the court relied on both the language of

claim 1 and the specification’s description of imparting flavor through its smoking

method.

       Lastly, the court construed the step of “exposure to the smoke cooled to between

0° and 5° C” as occurring after the smoke “has already been cooled . . . to between 0°

and 5° C.” Id. at *20. The court relied heavily on the plain language of the claim itself in

reaching its construction of that limitation.

       The parties then entered into a stipulated judgment that under the district court’s

claim construction, HISI had not infringed the ’619 patent. The district court entered a

final judgment based on that stipulation. TPI timely appealed the district court’s final

judgment and HISI filed a timely cross-appeal. We have jurisdiction under 28 U.S.C.

§ 1295(a)(1).

                                        DISCUSSION

       Before we address the question of construction of the disputed terms, we turn to

the terms of the stipulated agreement, which was entered as the Stipulated Final

Judgment. TPI argues that the Stipulated Final Judgment is “at best ambiguous” and

that if we reverse one of the three disputed claim constructions we must remand the

case      for   “further     factual    findings.”       Oral     Argument       at    9:28,

http://oralarguments.cafc.uscourts.gov/mp3/2008-1410.mp3.         HISI counters that if we

were to uphold “the District Court’s construction on even one of these limitations, there

can be no infringement, and the judgment of non-infringement in favor of HISI would

stand.” Appellant’s Br. at 19.

       We agree with HISI that affirmance of the construction of one of the disputed




2008-1410, -1435                                5
claim limitations results in an affirmance of the judgment of noninfringement.        That

conclusion is borne out by the plain language of the Stipulated Final Judgment itself.

Paragraph 2 of the Stipulated Final Judgment defines the three disputed limitations as

“collectively, ‘disputed claim construction points.’” Stipulated Final Judgment, at ¶ 2.

The final line of the agreement reads:

       If the United States Court of Appeals for the Federal Circuit reverses the
       disputed claim construction points, the parties may reassert all claims and
       issues previously set forth on remand to the United States District Court
       for the District of Hawaii.

Id. at ¶ 7 (emphasis added). Thus, the Stipulated Final Judgment permits reassertion of

issues on remand only in the event that we reverse all three disputed limitations, or, as

the Stipulated Final Judgment defines them, the “disputed claim construction points.”

       Furthermore, the agreement stipulates that HISI does not infringe the ’619 patent

“because the patent claim limitations” are not met by any of the allegedly infringing

products. Id. at ¶ 3. Although “patent claim limitations” is not a defined term in the

Stipulated Final Judgment, the use of the plural in that phrase amounts to a concession

by TPI that the accused products do not meet any of the three disputed limitations. As

is well established, for infringement to occur an accused infringer must perform all of the

steps of a method claim or the equivalent thereof. See Ricoh Co., Ltd. v. Quanta

Computer, Inc., 550 F.3d 1325, 1333 (Fed. Cir. 2008) (“Infringement of a method claim

‘occurs when a party performs all of the steps of the process.’”) (quoting BMC Res., Inc.

v. Paymentech L.P., 498 F.3d 1373, 1379 (Fed. Cir. 2007)).             Because TPI has

conceded that HISI’s products do not infringe any of the three disputed claims as

construed by the district court, we must reverse all three constructions in order for TPI

to succeed in its appeal.



2008-1410, -1435                            6
       Having determined the scope of the stipulated judgment and thus the scope of

the appeal, we now turn to the appropriate construction of one of the disputed

limitations. We review claim construction de novo on appeal. Cybor Corp. v. FAS

Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). Claim terms should

generally be given their ordinary and customary meaning and such meaning is one “that

the term would have to a person of ordinary skill in the art in question at the time of the

invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc).

Moreover, “the person of ordinary skill in the art is deemed to read the claim term not

only in the context of the particular claim in which the disputed term appears, but in the

context of the entire patent, including the specification.” Id. at 1313.

       With these principles in mind, we turn to the appropriate construction of one of

the disputed terms. We turn to the third disputed limitation, that of “smoke cooled to

between 0° and 5° C.”       TPI argues that the district court erred by construing that

limitation as requiring a process that first cools the smoke and later applies the cooled

smoke to the tuna. According to TPI, under the language of the claim, the smoke can

be applied to the tuna first, and then cooled to the stated temperature range. In support

of that interpretation, TPI notes that the “smoke cooled” limitation does not introduce the

smoke using the word “said,” which is traditionally used by claim drafters to reference

previously-mentioned limitations. Here, the claim instead refers to the smoke as “the

smoke cooled,” which, in TPI’s view, introduces a new element to the claim.

       HISI, in contrast, urges us to affirm the district court’s construction which requires

the smoke to have been cooled before exposing it to the tuna. HISI interprets the

phrase “the smoke cooled” as referring to the smoke filtered in the previous step of




2008-1410, -1435                              7
claim 1’s method. According to HISI, the use of the past tense “cooled” precludes any

reading that would permit the cooling and smoking steps to be performed

simultaneously or in reverse order. Furthermore, HISI argues, the specification of the

’619 patent confirms the order of the cooling steps in the smoking process.

       We agree with HISI that to infringe the ’619 patent, a method must cool the

smoke before the smoke contacts the tuna.             The plain language of claim 1

demonstrates that the district court was correct in placing a temporal limitation on the

steps of the smoking method. As the district court noted, this case is one in which the

“sequential nature of the claim steps is apparent from the plain meaning of the claim

language and nothing in the written description suggests otherwise.” Tuna Processors,

2007 U.S. Dist. LEXIS 77396 at *19 (quoting Interactive Gift Exp., Inc. v. Compuserve,

Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001)).

       Claim 1 describes a multistep process of creating smoke within a particular

temperature range and then cooling that smoke to another temperature range. In each

step of the method, the smoke is referenced by using a past participle describing the

action that occurred in the previous step. To illustrate this, the steps of the ’619 patent

are reproduced below with the smoke references underlined:

          burning a smoking material at 250° to 400° C. and passing the
             produced smoke through a filter to remove mainly tar therefrom;

          cooling the smoke passed through the filter in a cooling unit to between
             0° and 5° C. while retaining ingredients exerting highly preservative
             and sterilizing effects; and

          smoking the tuna meat at extra-low temperatures by exposure to the smoke
            cooled to between 0° and 5° C.

       In the first step of claim 1, the smoke is “produced” by burning a smoking




2008-1410, -1435                            8
material. In that same limitation, the smoke is passed through a filter. The smoke

filtration aspect of the first step, which must occur after the smoke is produced, refers to

the smoke as “the produced smoke.” The use of the past participle confirms that the

smoke must be produced prior to being filtered. The second step of claim 1, the cooling

step, refers to the smoke as “the smoke passed through the filter.” Again, the use of the

past participle “passed” leads to the conclusion that the cooling of the smoke occurs

after the smoke has passed through the filter. In both the first and second steps, the

smoke from a previous limitation is referenced using a past participle, indicating that the

previous limitation must have occurred prior to the present limitation. In other words,

“the smoke produced” must have been produced prior to filtration, just as the “smoke

passed through the filter” must have been filtered prior to being cooled. In the same

manner, the use of the past participle in “the smoke cooled” in the disputed third step

requires that the smoke have been cooled prior to contacting the tuna meat for

infringement to occur.

       Nothing in the specification dissuades us from reading a temporal limitation in the

third step of claim 1. Indeed, the specification confirms the appropriateness of such a

temporal limitation. The second step of claim 1 states that the smoke is cooled in a

“cooling unit.” ’619 Patent, Cl.1. The Summary of the Invention of the ’619 patent

instructs that the smoke from the “smoke-cooling unit” is exposed to the tuna in a

separate location, “a smoking chamber.” Id. col.1 ll.63, 65; see also id. fig.1, col.4 ll.13-

14 (drawing of separate locations for the smoking chamber and smoke-cooling unit).

The presence of two distinct locations for the cooling step and the exposure step

eliminates the possibility of simultaneous cooling and exposure. The Summary of the




2008-1410, -1435                             9
Invention further indicates that the smoking chamber is where pieces of tuna are placed

together and “exposed to smoke from the smoke-cooling unit.” Id. col.1 ll.66-67. Thus,

the smoke must have been cooled prior to being introduced into the smoking chamber.

Numerous other references in the specification confirm this sequential ordering of steps.

See id. col.3 ll.33-40 (teaching that the smoke from the smoke-cooling unit is “brought

into contact” with fish in the smoking chamber); col.4 ll.66-col.5 l.1 (“The smoke-cooling

unit 3 delivers the smoke cooled to between 0° and 5° C. through the pipe 32 to the

smoking chamber 4.”).

       TPI’s argument that the use of the definite article “the” in the third step somehow

indicates that the smoke used in that step is different from the smoke in the previous

step is without merit. As demonstrated above, all of the steps of claim 1 clearly refer to

the same smoke. There is nothing in the claims or specification of the ’619 patent that

would indicate that smoke different from the filtered and cooled smoke of the first and

second steps is introduced in the last step of the method. The ’619 patent is concerned

with creating smoke having a particular temperature, preservative ability, and flavor in

order to optimally cure tuna fish. TPI’s claim that a new type of smoke is introduced

during the last step of the process runs contrary to the entire purpose and design of the

’619 patent and its claims. It simply is an attempt to cloud the issue.

       Furthermore, TPI’s claim drafting argument misstates traditional claim drafting

practice. Indeed, the introduction of a new element is accomplished through the use of

an indefinite article, not through the use of a definite article. See, e.g., Robert C. Faber,

Faber on Mechanics of Patent Claim Drafting, App. D-1 (6th ed. 2008) (“the definitive

article THE is used to refer to an ELEMENT which has been established earlier in a




2008-1410, -1435                             10
claim.”); see also 2 Manual of Patent Examining Procedure, ch. 2173.05(e) (8th ed.

2006) (giving an example of an indefinite claim caused by use of the term “the lever”

without an antecedent introduction of “a lever”). Thus, the use of the definite article in

the third step of claim 1 supports our conclusion that “the smoke cooled” is the smoke

from the previous step.

       In light of all of the above, we conclude that the third step of claim 1 of the ’619

patent must occur after the smoke has been cooled to between 0° and 5° C for

infringement to exist. Having reached that conclusion, we affirm the district court’s final

judgment of noninfringement. It is not necessary for us to consider the other contested

claim terms in light of the stipulation.

       As for HISI’s cross-appeal, it is rendered moot by our decision above.

                                           CONCLUSION

       Because the district court correctly construed “exposure to the smoke cooled to

between 0° and 5° C,” we affirm the court’s final judgment of noninfringement.

                                            AFFIRMED

                                             COSTS

       Costs to be awarded to HISI.




2008-1410, -1435                               11
