Reference no: EM133579605

Introduction

Here's a question that a panel of judges decided: Can a company patent how it makes a peanut butter and jelly sandwich? More specifically, in this instance, judges considered whether J. M. Smucker's method of making Uncrustables-which is a crustless peanut butter and jelly sandwich sealed inside soft bread-is worthy of legal protection against imitators. While the nature of this case is interesting, the legal rulings resulting from the case have broader implications. At stake is how generous the patent office should be in awarding patents-an issue with solid arguments on both sides. There were actually two cases leading up to the one that resulted in the final verdict. The three cases are designated Round 1, Round 2, and Round 3 of Smucker's battle to patent the peanut butter and jelly sandwich.

The case involves the Smucker's Uncrustables

sandwich. Uncrustables are found in the frozen foodsection of most grocery stores. They are 2-ounce peanut butter and jelly pockets that are sealed inside soft bread. They come in boxes of 4, 10, or 18 sandwiches. To make an Uncrustables ready to eat, the customer simply needs to let it thaw for 30-60 minutes. Uncrustables were developed in 1995 by DavidGeske, of Fargo, ND, and Len Kretchman, of FergusFalls, MN. The two started mass-producing them forMidwestern schools. Smucker's took note of theirsuccess and bought Geske and Kretchman's companyin 1999. The purchase of the company included ageneral patent on crustless peanut butter and jellysandwiches (Patent No. 6,004,596) that Geske andKretchman had obtained.Round 1: Smucker's versus Albie's FoodsIt wasn't long before Smucker's was defending itsturf. In 2001, Smucker's ordered a much smallerfirm, Albie's Foods, to stop selling its own crustlesspeanut butter and jelly sandwich. Albie's was sellingthe sandwich to a local school district. Albie's foughtback, and the case was eventually dismissed. In itsarguments, Albie's contended that the "pasty"-ameat pie with crimped edges, which the companysaw its crustless peanut butter and jelly sandwich asa variation of-had been a popular food in northernMichigan since the immigration of copper and ironminers from England in the 1800s.Round 2: Smucker's and the Patent OfficeStung by its experience with the case it broughtagainst Albie's, Smucker's returned to the USPTOto try to get its general patent on crustless peanutbutter and jelly sandwiches broadened as a meansof being able to better defend the Uncrustables. Thepatent office rejected the application. The gist of theSmucker's argument was that its sandwich's sealededge is unique, and its layering approach, which keepsthe jelly in the middle of the sandwich, is one-of-akindand, as such, should be protected by law. Thepatent office disagreed with this view. It said that thecrimped edge, which was one of the things Smucker'sargued was unique about its sandwich, is similar tothe crimped edges in ravioli and pie crusts. In addition,the patent office determined that putting jelly in themiddle of a peanut butter and jelly sandwich is hardlyunique, and as evidence cited a 1994 Wichita (Kansas)Eagle newspaper article on back-to-school tips thatsuggested just this approach.Round 3: Smucker's AppealsSmucker's appealed the patent office's decision tothe U.S. Court of Appeals. During the court hearingsthe attorney representing Smucker's argued that themethod for making the Uncrustables is unique becausethe two slices of bread are sealed by compression butare not "smashed" as they are in tarts or ravioli. (Recallthat the patent office's original decision comparedthe process of making Uncrustables to that of makingravioli.) Smucker's further argued that it wouldn't be fairto let other companies simply copy the Uncrustablesand benefit from the hard work of Smucker's scientistsand the money that the company had invested toproduce what it believed was a unique product. TheUncrustables is also a big seller for Smucker's.Broader Issues InvolvedThe Smucker's case was watched closely becauseof the broader issues involved. Critics of the U.S.patent process contend that the USPTO is toogenerous when awarding patents-a generositythat they say stifles innovation and drives up thecost for consumers. In the Smucker's case, thecritics would argue that Smucker's shouldn't get thepatent, because it will deter other food companiesfrom making their own versions of peanut butterand jelly sandwiches, which will keep the price ofthe Uncrustables high. Advocates of the U.S. patentprocess argue the opposite-that patents motivatea company like Smucker's to invest in new-productinnovation, and that absent patent protection, acompany like Smucker's would have no incentive todevelop a product like the Uncrustables.The Court's RulingIn mid-April 2005, after listening to all the arguments,the U.S. Court of Appeals ruled on whether Smucker'sshould get the patent it was requesting. Which way doyou think the court ruled and why? Use a search engineto find the answer to this interesting question!

Discussion Questions
12-35. Go to the USPTO's website (www.uspto.gov) to look up Patent No. 6,004,596. Read the patent. After reading the patent, are you more inclined or less inclined to side with the Smucker's point of view?

12-36. Type "Uncrustables" into the Google search engine and look at the Uncrustables sandwich. Spend a little time reading about the Uncrustables on the Smucker's website. Again, after looking over the website, are you more inclined or less inclined to side with the Smucker's point of view?

12-37. In regard to the arguments espoused by the "critics" of the U.S. patent system and the "advocates" of the U.S. patent system, with which of the points of view do you agree? Thinking as an entrepreneur, use your own words to state why you think the critics or the
advocates have a stronger point of view.

12-38. After using a search engine to discover how the court ruled, why do you think the court ruled as it did? Use materials in the chapter to explain and justify your thinking.