Case 1:16-cv-00449-DCN Document 484 Filed 04/16/24 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF IDAHO
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`J.R. SIMPLOT COMPANY,
`
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`Plaintiff,
`v.
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`McCAIN FOODS USA, INC.,
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`Defendant.
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`McCAIN FOODS LIMITED,
`
`
`Plaintiff,
`v.
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`J.R. SIMPLOT COMPANY,
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`
`Defendant.
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`Case No.: 1:16-cv-00449-DCN
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`FINAL JUDGMENT REGARDING
`U.S. PATENT NO. 6,821,540
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`J.R. SIMPLOT COMPANY,
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`Third-Party Plaintiff,
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`
`v.
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`ELEA VERTRIEBS-UND-
`VERMARKTUNGSGESELLSCHAFT,
`MBH; FOOD PHYSICS LLC,
`
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`Third-Party Defendants.
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`Before the Court is a Joint Motion for Entry of Judgment. Dkt. 483. The motion is
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`Granted as follows:
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`WHEREAS, on January 3, 2024, the Court issued its Memorandum Decision and
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`Order (“Order”), docketed as Dkt. 474 (sealed version, with a public version docketed as
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`Dkt. 475), disposing of all pending motions, including, as relevant here, all pending
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`FINAL JUDGMENT REGARDING U.S. PATENT NO. 6,821,540 - 1
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`
`
`
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`UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF IDAHO
`
`J.R. SIMPLOT COMPANY,
`
`
`Plaintiff,
`v.
`
`McCAIN FOODS USA, INC.,
`
`
`Defendant.
`
`McCAIN FOODS LIMITED,
`
`
`Plaintiff,
`v.
`
`J.R. SIMPLOT COMPANY,
`
`
`Defendant.
`
`Case No.: 1:16-cv-00449-DCN
`
`FINAL JUDGMENT REGARDING
`U.S. PATENT NO. 6,821,540
`
`
`
`
`
`
`
`J.R. SIMPLOT COMPANY,
`
`Third-Party Plaintiff,
`
`
`v.
`
`ELEA VERTRIEBS-UND-
`VERMARKTUNGSGESELLSCHAFT,
`MBH; FOOD PHYSICS LLC,
`
`
`Third-Party Defendants.
`
`
`Before the Court is a Joint Motion for Entry of Judgment. Dkt. 483. The motion is
`
`Granted as follows:
`
`WHEREAS, on January 3, 2024, the Court issued its Memorandum Decision and
`
`Order (“Order”), docketed as Dkt. 474 (sealed version, with a public version docketed as
`
`Dkt. 475), disposing of all pending motions, including, as relevant here, all pending
`
`FINAL JUDGMENT REGARDING U.S. PATENT NO. 6,821,540 - 1
`
`
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`Case 1:16-cv-00449-DCN Document 484 Filed 04/16/24 Page 2 of 5
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`motions filed by McCain Foods USA, Inc. and McCain Foods Limited (together,
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`“McCain”), J.R. Simplot Company (“Simplot”), and Third-Party Defendants Elea
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`Vertriebs-und-Vermarktungsgesellschaft, mbH (“Elea”) and Food Physics LLC (“Food
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`Physics” and together, with Elea, “Third-Party Defendants”) regarding U.S. Patent No.
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`6,821,540 (“the ’540 Patent”);
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`WHEREAS the Court’s Order held claims 1 and 6 of the ’540 Patent (the asserted
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`claims of the ’540 Patent) invalid as indefinite, lacking written description, and lacking
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`enablement as a matter of law, see Dkt. 475 at 60-61, 139-40;
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`WHEREAS the Court’s Order also resolved all other pending motions regarding
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`the ’540 Patent, including granting summary judgment to Simplot of no divided
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`infringement of the ’540 Patent and denying summary judgment to Simplot of no direct
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`infringement, see Dkt. 475 at 140;
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`WHEREAS the Court also on summary judgment resolved other issues regarding
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`other claims and counterclaims in the case, including granting summary judgment to
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`Simplot that the Third-Party Defendants breached one or more Purchase Contracts with
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`Simplot, see Dkt. 475 at 140;
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`WHEREAS the Court previously resolved other pending motions regarding the
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`’540 Patent, including denying Simplot’s Motion for Judgment on the Pleadings that claims
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`1 and 6 of the ’540 Patent are ineligible under 35 U.S.C. § 101 and that claim 6 is invalid
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`for failing to comply with pre-AIA 35 U.S.C. § 112 ¶ 5, see Dkt. 157 at 15-26;
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`WHEREAS, in light of the Court’s invalidity holding regarding the ’540 Patent,
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`there can be no infringement of the ’540 Patent, see, e.g., Medtronic, Inc. v. Cardiac
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`FINAL JUDGMENT REGARDING U.S. PATENT NO. 6,821,540 - 2
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`Case 1:16-cv-00449-DCN Document 484 Filed 04/16/24 Page 3 of 5
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`Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed. Cir. 1983) (“[A]n invalid claim cannot give
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`rise to liability for infringement . . . .”); TypeRight Keyboard Corp. v. Microsoft Corp., 374
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`F.3d 1151, 1157 (Fed. Cir. 2004) (“[A]lthough a judgment of noninfringement does not
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`necessarily moot validity issues . . . a judgment of invalidity necessarily moots the issue
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`of infringement.”); W.L. Gore & Assocs. v. Int’l Med. Prosthetics Research Assocs., 975
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`F.2d 858, 863 (Fed. Cir. 1992) (“Once the district court decided that Gore’s patent was
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`invalid or that IMPRA did not infringe Gore’s patent, the district court no longer needed
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`to address any of the other defenses.”);
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`WHEREAS, but for other issues still pending in the case, all claims, counterclaims,
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`and defenses relating to the ’540 Patent would be ripe for final judgment;
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`WHEREAS the parties have met and conferred and agree that this Court has the
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`authority to enter judgment on the ’540 Patent pursuant to Federal Rule of Civil Procedure
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`54(b), and the parties further agree to entry of such judgment to enable an immediate appeal
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`regarding the ’540 Patent, see Fed. R. Civ. P. 54(b) (“When an action presents more than
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`one claim for relief . . . the court may direct entry of a final judgment as to one or more,
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`but fewer than all, claims . . . only if the court expressly determines that there is no just
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`reason for delay.”);
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`IT IS ORDERED that the requirements of Rule 54(b) are satisfied with respect to
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`a final judgment regarding the ’540 Patent: Although other claims, counterclaims, and
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`defenses remain pending in this case, those issues do not overlap with the issues on the
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`’540 Patent, and there is no just reason for delaying an appeal regarding the ’540 Patent
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`until the remaining issues are resolved, which includes resolution of the issues regarding
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`FINAL JUDGMENT REGARDING U.S. PATENT NO. 6,821,540 - 3
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`Case 1:16-cv-00449-DCN Document 484 Filed 04/16/24 Page 4 of 5
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`U.S. Patent No. D640,036, U.S. Patent No. D720,916, and attorneys’ fees relating to the
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`breach of the Purchase Contracts between Third-Party Defendants and Simplot; and it is
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`further
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`ORDERED AND ADJUDGED that final judgment is hereby entered pursuant to
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`Rule 54(b), in favor of Simplot and the Third-Party Defendants and against McCain, on
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`McCain’s complaints arising under the ’540 Patent based on the Court’s finding that
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`Simplot cannot be liable for infringing the only remaining asserted claims of the ’540
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`Patent (claims 1 and 6) because those claims are invalid as indefinite, lacking written
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`description, and lacking enablement (“Final Judgment”), see Dkt. 475 at 32 (“Simplot
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`cannot be liable for infringement because the ’540 Patent is invalid”); and it is further
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`ORDERED that all interlocutory and other decisions, orders, findings, and/or
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`conclusions issued by the Court in this case related to the ’540 Patent—including without
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`limitation the Court’s Order and the Court’s prior findings and rulings related to the ’540
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`Patent regarding claim construction, infringement, patent eligibility, and other grounds of
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`invalidity—merge into this Final Judgment and are within the scope of this Final Judgment
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`for purposes of appeal; and it is further
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`ORDERED that any bill of costs under Federal Rule of Civil Procedure 54(d) or
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`motion for attorney’s fees under Federal Rule of Civil Procedure 54(d), related to the ’540
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`Patent, shall be deferred until all appeals from this Final Judgment have been concluded.
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`If McCain does not file an appeal in this litigation, any deadline for filing such attorneys’
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`fees motions and any bill of costs, shall be extended to 45 days after the deadline for
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`McCain to file a Notice of Appeal has lapsed. If McCain timely pursues an appeal, then
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`FINAL JUDGMENT REGARDING U.S. PATENT NO. 6,821,540 - 4
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`Case 1:16-cv-00449-DCN Document 484 Filed 04/16/24 Page 5 of 5
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`the deadline for filing such attorneys’ fees motions and any bill of costs, shall be extended
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`to 45 days after the mandate issues from the Court of Appeals for the Federal Circuit based
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`on McCain’s appeal. On the foregoing basis, no party will oppose any such motion on the
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`basis of timeliness if filed within the deadlines set forth herein; and it is further
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`ORDERED that, by entry of this Final Judgment, the parties do not waive any
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`objections to, or each party’s right to appeal, any other rulings in the Court’s Order or any
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`other interlocutory decisions, orders, findings, and/or conclusions of the Court, including
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`the holding that Elea and Food Physics breached one or more Purchase Contracts with
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`Simplot, and it is further
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`ORDERED that, should this case be remanded in whole or in part after an appeal,
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`all claims, counterclaims, and defenses regarding the ’540 Patent shall be reinstated to the
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`extent they were not resolved on appeal.
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`DATED: April 16, 2024
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`_________________________
`David C. Nye
`Chief U.S. District Court Judge
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`FINAL JUDGMENT REGARDING U.S. PATENT NO. 6,821,540 - 5
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