NOTE: This disposition is nonprecedential.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 

____________________________ 

YOON JA KIM, Park Ridge, Illinois, pro se. 

CRAIG C. MARTIN, Jenner & Block, LLP, of Chicago, 

Illinois, for defendant-appellee. With him on the brief 

were STEVEN R. TRYBUS and SARA TONNIES HORTON; and 

ELAINE J. GOLDENBERG, of Washington, DC. 

__________________________ 
KIM v. EARTHGRAINS CO 2

Before LOURIE, BRYSON, and MOORE, Circuit Judges. 

LOURIE, Circuit Judge. 

Yoon Ja Kim appeals from the district court’s judgment 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 conclusion 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 potassium 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 
3 KIM v. EARTHGRAINS CO

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 composition 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 selected 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 reexamination, 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 essentially of” transitional phrase with “consisting of.” Id. In 

addition, Kim narrowed the claimed “food acid” to those 
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 concluded 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 
5 KIM v. EARTHGRAINS CO

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, specifically “potassium bromate replacer composition, consisting 

of”; “ascorbic acid”; “said food acid is present in an effective 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 concluded 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 jurisdiction pursuant to 28 U.S.C. § 1295(a)(1). 

DISCUSSION

Kim appeals the district court’s grant of summary 

judgment regarding intervening rights and noninfringement, 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 standard applied by the district court. Iovate Health Scis., 

Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 
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 reexamined claims only if the reexamined claims are “identical” 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 substantive 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 substantively 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 
7 KIM v. EARTHGRAINS CO

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 “consisting 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 products.” 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-
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 compares 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, reviewed de novo. Id. (citing Markman v. Westview Instruments, 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 constructions 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 
9 KIM v. EARTHGRAINS CO

district court correctly concluded that Kim failed to raise 

a genuine dispute of material fact that the accused potassium bromate replacers contained the claimed amount of 

“ascorbic acid” by weight, we decline to address her arguments. 

In the district court, the parties agreed that the construction of “ascorbic acid” is “ascorbic acid – also known 

as vitamin C or L-ascorbic acid – is a water soluble vitamin that is found in fruits and vegetables and is reversibly 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, C6H8O6. 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 specification 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 
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 infringement. 

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