415 F.Supp.3d 243 (D.Mass. 2019), C. A. 4:18-11631-TSH, Inline Plastics Corp. v. Lacerta Group, Inc.

Docket Nº:CIVIL ACTION No. 4:18-11631-TSH
Citation:415 F.Supp.3d 243
Party Name:INLINE PLASTICS CORP., Plaintiff, v. LACERTA GROUP, INC., Defendant.
Attorney:David J. Silvia, Pro Hac Vice; McCarter & English, Newark, NJ, Erik Paul Belt, Thomas F. Foley, McCarter & English, LLP, Boston, MA, for Plaintiff. Craig M. Scott, Hinckley, Allen & Snyder LLP, Providence, RI, Gina K. Kim, Pro Hac Vice; Rebecca F. Briggs, Pro Hac Vice; Laurel M. Gilbert, Hinckley...
Case Date:December 04, 2019
Court:United States District Courts, 1st Circuit, District of Massachusetts

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415 F.Supp.3d 243 (D.Mass. 2019)




CIVIL ACTION No. 4:18-11631-TSH

United States District Court, D. Massachusetts

December 4, 2019

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David J. Silvia, Pro Hac Vice; McCarter & English, Newark, NJ, Erik Paul Belt, Thomas F. Foley, McCarter & English, LLP, Boston, MA, for Plaintiff.

Craig M. Scott, Hinckley, Allen & Snyder LLP, Providence, RI, Gina K. Kim, Pro Hac Vice; Rebecca F. Briggs, Pro Hac Vice; Laurel M. Gilbert, Hinckley Allen & Snyder, LLP, Boston, MA, for Defendant.



This is a patent infringement suit involving tamper-resistant/tamper-evident containers. Inline Plastics Corp. ("Inline") seeks a judgment that Lacerta Group, Inc. ("Lacerta"), a competing manufacturer, infringes upon one or more claims of its patents: U.S. Patent No. 7,118,003 (the "’003 Patent"), U.S. Patent No. 7,073,680 (the "’680 Patent"), U.S. Patent No. 9,630,756 (the "’756 Patent"), U.S. Patent No. 8,795,580 (the "’580 Patent"), and U.S. Patent No. 9,527,640 (the "’640 Patent") (collectively, the "Inline Patents"). Lacerta seeks declaratory judgment that its product does not infringe the Inline Patents and/or that the Inline Patents are invalid under 35 U.S.C. § § 102-03, 112.1 On November 6, 2019, the Court held a Markman hearing and listened to the parties’ proposed constructions for the following disputed terms: (1) "[upwardly projecting] bead; " (2) "at least in part; " (3) "relatively inaccessible; " (4) "hinder access; " (5) "tamper evident bridge; " (6) "projection" or "arm; " (7) "configured to substantially surround the outwardly extending peripheral flange of the cover portion; " (8) "configured to substantially surround an edge of the outwardly extending peripheral flange of the cover portion; " and (9) "the outwardly extending peripheral flange abuts the upper peripheral rim of the base portion."


The Inline Patents are variously entitled "Tamper Resistant Container with Tamper-Evident Feature and Method of Forming the Same," "Methods of Manufacturing Tamper-Resistant and Tamper Evident Containers," and "Tamper-Resistant and Tamper Evident Containers." They share similar specifications and figures and are all directed to "containers and packaging that incorporate tamper-resistant and tamper-evident features." ’003 Patent col.1 l.16-19; ’680 Patent col.1 l.18-21; ’756 Patent col.1 l.25-28; ’580 Patent col.1 l.21-23; ’640 Patent col.1 l.23-26. Specifically, they describe a container incorporating a non-replaceable strip that a consumer must sever before they can remove the cover portion from the base portion. ’003 Patent col.6 l.55-67; ’680 Patent col.7 l.18-30; ’756 Patent col.6 l.23-35; ’580 Patent col.6 l.12-23; ’640 Patent col.6 l.23-35.

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1. Legal Standard

Indefiniteness is a question of law which implicates underlying factual findings. See Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1299 (Fed. Cir. 2010). "[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014). Terms of degree are not inherently indefinite. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). A claim may employ terms of degree if it "provide[s] enough certainty to one of skill in the art when read in the context of the invention" for a skilled artisan to identify the metes and bounds of the claim. Id.

2. Discussion

Lacerta contends that the terms "at least in part," "relatively inaccessible," and "tamper evident bridge" are indefinite.2 First, as to "at least in part," Lacerta argues that a skilled artisan would not understand the metes and bounds of this term because the patent fails to explain what else may form the relevant structures aside from the specified components (i.e., what else may form the upper peripheral edge aside from the upwardly projecting bead, the cover portion aside from a sheet of plastic material, or the circumferential engagement sealing interface aside from a plurality of arcurate segments and rounded corner portions). (Docket No. 39 at 10-11). The Court disagrees that the lack of information as to what else may form these structures renders the terms indefinite. A skilled artisan would recognize that the claims cover any structure incorporating the specified components.3

Second, as to "relatively inaccessible," Lacerta argues that this Court should find the term indefinite because the Canadian Patent Office found the same language indefinite in the prosecution of a related Canadian patent application. (Docket No. 39 at 17-18). The decision of the Canadian Patent Office does not bind this Court, see, e.g., AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1279 (Fed. Cir. 2011), and this Court disagrees with the result reached.4 The patents provide sufficient guidance for a skilled artisan

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to understand the scope of the term. They only use "relatively inaccessible" in the context of the upwardly projecting bead, and the specification explains that the upwardly projecting bead makes the outwardly extending peripheral flange of the cover portion relatively inaccessible by surrounding it and physically blocking5 access to it. See, e.g., ’003 Patent col.5 l.67; ’680 Patent col.6 l.32; ’756 Patent col.5 l.37. A skilled artisan would understand the metes and bounds of "relatively inaccessible" based on this description.

Finally, as to "tamper evident bridge," Lacerta argues that the term is indefinite because it has no antecedent basis in the ’003 Patent and was only added during prosecution to differentiate prior art references. The Court disagrees. The claim language sufficiently delineates the scope of the term. Claim 1 describes the tamper evident bridge as connecting the cover portion to the base portion. ’003 Patent col.8 ll.64-65. Claim 2 adds the limitation that the tamper evident bridge includes a hinge with a frangible section that joins the outwardly extending flange of the cover portion to the base portion and forms a projection when severed. ’003 Patent col.8 l.66-col.9 l.7. And Claim 24 focuses on making the container leak-proof after the tamper evident bridge is removed. ’003 Patent col.10 ll.56-59. As Inline’s expert testified, a skilled artisan would understand what a "tamper evident bridge" is based on this language. (Docket No. 40-6 at 10-16). The claim language, moreover, is consistent with the figures and description in the specification of the ’003 Patent, which, despite not explicitly defining a "tamper evident bridge," does describe how it operates, e.g., how the cover and base are connected and how that relates to frangible section of the hinge. Thus, the Court declines to find "tamper evident bridge" invalid for indefiniteness.

Claim Construction

1. Legal Standard

Claim construction is a question of law decided by the court. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). It "requires a determination as to how a person of ordinary skill in the art would understand a claim term ‘in the context of the entire patent, including the specification.’ " Trustees of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)). Courts begin the analysis by looking to the language of the claims themselves. Id. In many instances, how a term is expressly used "within the claim provides a firm basis for construing the term." Phillips, 415 F.3d at 1314.

After assessing the language of the claims, courts turn to the specification, "of which [the claims] are a part." Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). The specification describes the invention to which the claims are directed. Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) ("The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose."). It "is the ‘single best guide to the meaning of a disputed term’ and ‘is, thus, the primary basis for construing

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the claims.’ " Symantec, 811 F.3d at 1362 (quoting first Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996), then Phillips, 415...

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