Haberman v. Playtex Products, Inc.
| Decision Date | 02 December 2005 |
| Docket Number | No. 05-C-224-S.,05-C-224-S. |
| Citation | 403 F.Supp.2d 708 |
| Parties | Mandy N. HABERMAN, Plaintiff, v. PLAYTEX PRODUCTS, INC., Gerber Products Company, and Walmart Stores, Inc. Defendants. |
| Court | U.S. District Court — Western District of Wisconsin |
John F. Hovel, Kravit, Hovel, Krawczyk & Leverson, Milwaukee, WI, James R. Cole, Quarles & Brady, Madison, WI, for Defendants.
Plaintiff Mandy N. Haberman commenced this patent infringement action alleging that defendants Playtex Products, Inc., Gerber Products Company and Walmart Stores, Inc. manufacture and sell non-spill cups and replacement valves which infringe her United States Patents Nos. 6,102,245 and 6,116,457. Jurisdiction is based on 28 U.S.C. § 1338. The matter is presently before the Court on the motion of defendants Playtex and Gerber for partial summary judgment that they do not infringe the '245 patent and that the '457 patent is invalid as anticipated and obvious. The following undisputed facts are relevant to the pending motion.
Defendant Playtex manufactures and sells a line of spill-proof cups which include the "SipEase" valve. The SipEase valve is a silicone cartridge including a slitted valve membrane which is inserted into the cup. One such valve is situated just under the opening of the cup spout and controls the flow of liquid out through the spout. The valve membrane is curved inwardly such that it is convex to the interior of the cup and the direction of flow of the liquid. Defendant Gerber also manufactures and sells a line of spill-proof cups and replacement valves. The valves in its cups are similarly curved inwardly such that they are convex to the interior of the cup and the direction of flow of the liquid.
The '245 patent was issued on August 15, 2000. Its four independent claims 1, 5, 12 and 15 each include a claim element relating to the valve structure. Claim 1 includes the following element:
a valve element operatively associated with said spout, said valve element having a substantially dome-shaped region, said valve element comprising a self-closing slit valve formed in said dome-shaped region, said slit valve being arranged to open upon no more than a predetermined difference of pressure, greater within the vessel than outside, being present across said slit valve, whereby said valve element is effective to prevent flow of said drink from within said container unless a predetermined level of suction is applied to the spout, and whereby a user is able to draw said drink through the spout by the sole application of suction thereto to provide said difference of pressure.
Claims 5 and 15 include a similar element which includes "a substantially dome-shaped region" with a "slit valve" located therein.
Claim 8, which depends from claims 5, 6 and 7, adds an element concerning a second valve related to an air inlet aperture:
The drinking vessel of claim 7, wherein said second valve means has a dome-shaped region, a slit serving as a self-closing slit valve being formed in said dome-shaped region, said dome-shaped region of said second valve means being concave in the opposite sense to the dome-shaped region associated with the first mentioned valve means.
Claim 12 includes the following element:
valve means operatively associated with said spout, said valve means comprising a separate valve member positioned between said lid and said container, said valve member having a self-closing slit valve there through, said self-closing slit valve being arranged to open upon no more than a predetermined difference of pressure, greater within the vessel than outside, being present across said slit valve, whereby said valve means is effective to prevent flow of said drink from within said container unless a predetermined level of suction is applied to the spout, and whereby a user is enabled to draw said drink through the spout by the sole application of suction thereto to provide said difference of pressure.
The '245 specification describes the invention generally at col. 1, ln. 59 to col. 2, ln. 13. This general description includes no reference to the shape of the two valves, providing only that the spout valve must permit liquid to flow out of the cup only under a predetermined amount of suction and that the air valve allow for air ingress while preventing liquid egress. The valves are described in detail at Col. 2 ln. 20-29:
The two valves may comprise dome-shaped regions, the larger underlying the lid in the region of the mouthpiece and being concave towards the interior of the container, and the smaller underlying the aperture and being convex towards the interior. The dome-shaped regions are provided with a simple slit or cross-cut which in effect is self-closing, in each case the slit or cross-cut allowing flow from the convex to the concave side but not in reverse direction. Other valve formations (e.g., a so-called "duck bill" or a flap valve) are feasible.
The specification describes other embodiments of the invention and provides drawings of the embodiments. Most of those embodiments include dome-shaped regions and in each case the valve associated with the dome-shaped region permits liquid flow only from the concave side to the convex side. Other embodiments describe a non-domed flat valve region, col. 5, ln. 12-14, and a flat topped "teat-configuration mouthpiece," col. 5, ln. 56-57, depicted in Figure 15.
Figure 1 of the '245 patent depicts a preferred embodiment where 18 is a dome-shaped region underlying the cup spout:
NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Plaintiff filed a U.S. patent application in 1994, a continuation of which led ultimately to issuance of the '245 patent. Dependent claim 8 of this original application claimed a drinking vessel wherein "said valve means comprises a dome-shaped region concave towards the interior of the cup-shaped container and having a slit to allow flow from concave to convex side but not in the opposite direction." The claims of this original application were all eventually withdrawn or rejected and the application abandoned. Among the reasons for rejection by the patent office was a finding that the prior art disclosed "dome-shaped regions, concave toward the interior." A continuing application filed October 18, 1996 canceled all previous claims and added new claims which included valve elements with no limitation as to shape.
On November 20, 1997 the Patent Office rejected the claims on the basis that they were indefinite and, among other things, anticipated by United States Patent No. 4,946,062 to Coy ("Coy Patent") and obvious under United States Patent No. 5,213,236 to Brown ("Brown patent"), et al. The office action suggested that the subject matter of a single claim 20 would be allowable if rewritten. In a May 27, 1998 response, plaintiff submitted revised claims which added the language that the valve be in a "dome-shaped region." In attempting to distinguish the claims from Coy, the plaintiff argued:
Coy discloses a container closure lid having a valved spout. The valve has an upwardly presented opening of ovoid shape. The valve further has tapered or inclined surfaces converging downwardly and meeting at the lower edge of the valve. The valve is open by application of lip pressure being communicated through the side walls of the spout, and transmitting through the side walls to the walls of the valve....
Contrary to Coy, claim 16, and all other independent claims, require a valve element having a generally dome-shaped region with a slit valve formed in the dome-shaped region. The slit valve opens upon a predetermined difference of pressure being present across the slit valve and whereby the pressure difference is provided by the sole application of suction thereto. Coy, however, does not disclose these limitations....
In attempting to distinguish the claims from Brown, plaintiff argued primarily that unlike plaintiff's invention Brown teaches to squeeze the walls of the container, "this is one of the problems that [plaintiff's] invention solves." The distinction was based on the use of suction in the '245 as opposed to increasing internal pressure in Brown. No mention was made concerning the shape of the valve in distinguishing the claims.
On January 29, 2000 the patent examiner allowed the present claims of the '245 patent, providing the following analysis:
The following is an examiner's statement of the reasons for allowance: the prior art of record did not disclose a cup and lid wherein said container comprises a substantially planar cover portion, a skirt surrounding said cover portion, and a dome shape valve operatively associated with said spout and having a self-closing slit valve formed in said dome-shaped region and arranged to open upon a predetermined pressure differential applied to said spout by suction thereto. The prior art of record discloses various dome-shaped valves comprising slits formed in the dome shaped region which open upon a pressure differential created by pressure to the container side walls or gravity upon the valve. It would not have been obvious to one of ordinary skill in the art to combine such teachings to render the container and valve of the instant application obvious.
The '457 patent was issued on September 12, 2000. It includes a single independent claim.
1. An article through which or from which a drinking liquid is taken by a consumer, the article having a spout provided with a valve comprising a membrane of resiliently flexible material, said membrane being provided with at least one split adapted such that the liquid may be drawn from or through said article by the sole application of a predetermined level of suction in the region of said valve, characterized in that the membrane has a normal condition in which it is dished inwardly of the article, opposite the direction through which the drinking liquid is taken in use of the...
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