Kemco Sales, Inc. v. Control Papers Co., Inc.
| Decision Date | 29 September 1998 |
| Docket Number | No. 97-CIV-1291(WGB).,97-CIV-1291(WGB). |
| Citation | 93 F.Supp.2d 563 |
| Parties | KEMCO SALES, INC. and Kenneth R. Makowka, Plaintiffs, v. CONTROL PAPERS COMPANY, INC. and Rodney Diplock, Defendants. |
| Court | U.S. District Court — District of New Jersey |
Michael Mullen, Schenck, Price, Smith & King, LLP, Morristown, NJ, Timothy R. DeWitt, Lowe, Price, Leblanc & Becker, Alexandria, VA, for plaintiffs.
Edward Dreyfus, Stanger & Dreyfus, PC, Westfield, NJ, Peter L. Berger, Barry E. Negrin, Levisohn, Lerner, Berger & Langsam, New York City, for defendants.
Defendants Control Papers Company, Inc. ("CPC") and Rodney Diplock move for partial summary judgment, asking this Court to hold that their tamper-evident envelope called TripLok Safe-Pak ("TripLok Bag") does not infringe the U.S.Patent 5,405,197, entitled "Tamper Evident Sealing System For Envelope & Method of Making Same" ("'197 Patent") of Plaintiffs Kemco Sales Inc. ("Kemco") and Kenneth R. Makowka. Plaintiffs cross-move for partial summary judgment, asking this Court to rule that Defendants' TripLok Bag literally infringes claim 27 of the motion and denies Plaintiffs' cross-motion.
Kenneth R. Makowka is the named inventor and owner of the '197 Patent. The '197 Patent is directed to solving a problem that arose in the plastic security bag industry. (Declaration of Kenneth R. Makowka ("Makowka Decl.") ¶ 2.) Plastic security bags are used to carry money and/or other valuables. ('197 Patent, col. 1, lines 27-29.) In early 1988, the industry discovered that the application of low temperatures, such as through use of a Freon spray, to the adhesive strip that sealed the bag would cause the bag to unseal. The flap to the bag could then be opened, contents could be removed, and then, after the low temperature dissipated from the area of the adhesive, the bag could be resealed, without leaving any indication that there had been an unauthorized entry into the envelope. (Id. col. 6, lines 58-68; Makowka Decl. ¶ 2.) In other words, the security envelopes were not very secure.
The '197 Patent discloses multiple embodiments for a tamper-evident security envelope. (Id., col. 1, lines 16-20, col. 3 lines 1-68.) Tamper-evident means that efforts to tamper will leave indications or evidence on the bag so that the recipient of the bag can be certain that no one has had access to the contents of the bag since the bag had been sealed. (See id., col. 1, lines 31-35.)
One preferred embodiment, represented by Figures 1-4 in the '197 Patent, essentially describes an envelope with a foldover flap. Similar to an ordinary business envelope, to close and seal the envelope, the flap is folded over and sealed to the outside of the envelope pouch.
More specifically, a sheet of plastic is folded in half to form the body of the envelope — a pocket with a base and two sides. (Id., col. 4, lines 20-25.) The sides are sealed together (or as the Patent states, two side seams are formed) by heat welds or the application of glue. (Id., col. 4, lines 25-29.) Thus, the envelope has a front and back panel that are sealed together on the sides, and an opening at the top into which contents may be placed. (Id., col. 4, lines 34-40.)
At the top of the front panel is a flap, also known as the closing means, which is made of the same material as, and is part of, the rest of the envelope. The flap is folded over the opening in order to close the pouch. The flap has two adhesive strips, also known as sealing means. (Id., col. 4, lines 36-46, and col. 6, lines 11-14.) The first adhesive is on the inside of the flap, and is covered with a peelable protective liner. The first adhesive may be adhesive tape or hot melt glue, and its purpose is to seal the envelope pouch. (Id., col. 4, lines 41-46 & 54-56.) The second adhesive strip is partially glued to the opposite or outside portion of the flap, and extends out over the top edge of the flap. The second adhesive is also covered with a peelable protective liner. Alternatively, a single peelable liner covers both adhesives. (Id., col. 4, lines 47-56.) The second adhesive is tamper-evident, so that if the first adhesive is unsealed, the second adhesive cannot be opened without leaving indications that tampering has occurred. When the flap is closed over the envelope opening, the two adhesives attach to the outside of the back envelope panel, the first adhesive closer to the opening, and the second adhesive further down the panel. For convenience, the Court has reproduced Figures 2, 2A, 3, & 4 of the '197 Patent, which are depictions of this embodiment. NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE A second embodiment, represented by Figures 5 and 6 of the '197 Patent, involves a flap that is separate and initially unattached to the envelope pouch. The flap, or closing means, is folded in half over the envelope pouch to cover the opening. Two sets of adhesives are on each half of the inside of the flap. When the flap is folded over the envelope, the two sets of adhesives strips adhere to the outside of the front and back panels of the pouch. The first set of adhesives, which are closer to the middle fold, correspond to the first adhesive in the prior embodiment, and their purpose is to close the envelope pouch. The second set of adhesives is further away from the opening, and are the tamper evident adhesives. (Id., col. 6, lines 37-47.) For convenience, the Court has reproduced Figures 5 and 6 of the '197 Patent, which are depictions of this embodiment. NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE
What is similar in all the embodiments, (see also '197 Patent, Figures 9-11B), is that to close the envelope, the flap is folded over the opening of the pouch, and the first adhesive is between the folded over flap and the outside portion of the back (or front and back) panel(s).
The '197 Patent includes forty-seven claims, of which only seven, claims 1, 18, 19, 27, 35, and 47, are independent. Of those seven claims, all but claim 27 explicitly include the element "plastic closing means which when placed over and secured to the plastic envelope material forms a closed pocket."1 (Id., col. 11-16 (emphasis added).) Claim 27, which constitutes the principal area of dispute between the parties, does not explicitly state such a limitation. Rather, Claim 27 states, in its entirety:
A tamper-evident sealing system for an envelope made at least partially of plastic material comprising:
envelope pocket having an opening therein through which contents can be placed into the pocket before the opening is closed;
plastic envelope closing means secured to the plastic envelope material to close the opening and to form a closed pocket, the closing means having at least one transverse edge;
first, adhesive, sealing means between the closing means and plastic envelope material for sealing the closing means to the plastic envelope material; and second, tamper-evident, sealing means secured to both the closing means and the envelope extending substantially along the length of and over the transverse edge which becomes visibly distorted, broken apart, or of disrupted continuity if attempts are made to reopen the second, tamper-evident, sealing means whereby tamper-evidency is provided even if the first, adhesive, sealing means can be reopened and reclosed without visual detection thereof.
('197 Patent, cols. 13, lines 67-68, and 14, lines 1-19.)
The TripLok Bag, designed by John Palazzolo, is also tamper-evident. Rather than using a fold-over flap to close and seal the envelope, the TripLok Bag is an internally sealing or "press-to-close" envelope. More specifically, a plastic sheet is folded in half to form a front and back panel that are sealed together on the sides. There is an opening at the top into which contents may be placed. The sides are not sealed to the very top, so that the front and back panels have two small lips, or mini-flaps, of equal length. (Certification of John Palazzolo ("Palazzolo Cert.") ¶ 3.)
The TripLok Bag also has two adhesives. The first adhesive is between the two lips. It runs along the top inside portion of the back panel's lip and is covered by a peelable protective liner. The first adhesive is a layer of hot melt adhesive. (Id. ¶¶ 4-6.) The second adhesive is a strip of "thin frangible material such as acetate or other suitable material." (Id. ¶ 4.) The second adhesive is glued to the outside of the back lip and extends out over the top to create a flap or "header." The same peelable liner that covers the first adhesive between the lips is extended up to cover the second adhesive as well. When the single liner is removed, the first adhesive seals the two lips together from the inside. In other words, the envelope is closed and sealed by pressing the two lips together. Then the header folds over the already sealed envelope and adheres to the outside of the front panel to create a second tamper evident seal. (Id. ¶¶ 4-6.) For convenience, the Court has reproduced Figures 1-4 in Exhibit B of the Palazzolo Declaration, which constitute non-scale drawings of the TripLok Bag.
If someone attempts to peel back the flap of the TripLok Bag using either heat, cold, or other means, the acetate header is designed so that it will show signs of tampering. (Palazzolo Decl. ¶ 8.) Even if the header is peeled back successfully, without any signs of tampering, this second adhesive is designed to remain, not on the header, but on the outside portion of the lip on the front panel. Furthermore, the inner seal created by the first adhesive will remain sealed. Allegedly, to gain...
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