Am. Innotek, Inc. v. United States

• Decision Date: 22 September 2016
• Docket Number: No. 11-223C,11-223C
• Parties: AMERICAN INNOTEK, INC., Plaintiff, v. THE UNITED STATES, Defendant.
• Court: U.S. Claims Court

AMERICAN INNOTEK, INC., Plaintiff, v. THE UNITED STATES, Defendant.

No. 11-223C

United States Court of Federal Claims

September 22, 2016¹

Patent Infringement; 28 U.S.C. § 1498; Prior Art; 35 U.S.C. § 102; Priority Date; 35 U.S.C. § 120; Invalidity; Obviousness; 35 U.S.C. § 103; Graham Factors; Objective Indicia of Nonobviousness; Nexus Requirement; Commercial Success; Long-felt Need; Copying.

Daniel W. Ernsberger, Behrend & Ernsberger, P.C., 355 Fifth Ave., 12^th Floor, Pittsburgh, PA 15222, for Plaintiff.

Benjamin C. Mizer and John Fargo, U.S. Department of Justice, Civil Division, Commercial Litigation Branch, Intellectual Property Staff, Washington D.C., P.O. Box 480, Ben Franklin Station, Washington, D.C. 20044, for Defendant. Corey R. Anthony, U.S. Department of Justice, Of Counsel.

OPINION AND ORDER

WILLIAMS, Judge.

This patent infringement case involves bags for the containment and disposal of bodily fluids. Plaintiff, American Innotek, Inc., claims that the United States infringed its 1992 patent, United States Patent No. 5,116,139 ("the '139 Patent") entitled "Fluid Containment Bag," by purchasing and using the accused product, a containment bag called the "Piddle Pak with Powder." The accused product was manufactured by the New York City Industries for the Blind("NYCIB"), a non-profit entity that provides products to the Government on a noncompetitive basis pursuant to the Javits Wagner O'Day Act ("JWOD").²

In 2001, a Government entity, the Committee for Purchase from People Who are Blind or Severely Disabled ("AbilityOne Committee"), placed the accused product, NYCIB's Piddle Pak with Powder, on the JWOD Procurement List as a mandatory source item for Government agencies. Plaintiff alleges that as a result of this listing and the ensuing manifold mandatory purchases and use of the Piddle Pak with Powder by Government agencies, its patent was infringed. Plaintiff contends that it lost Government sales of its competing product, the Flight Extender, a urine containment bag using hydrophilic material, and seeks to recoup damages for the period of April 8, 2005 to May 26, 2009.

Findings of Fact³

The '139 Patent

The United States Patent and Trademark Office ("USPTO") issued the '139 Patent entitled "Fluid Containment Bag" on May 26, 1992, from U.S. Patent Application No. 657,354 ("the '354 Application"), filed on February 15, 1991. JX 178 ("'139 Patent"). The '139 Patent lists four inventors: Ruth E. Young, Daniel L. Young, Richard E. Warrick, and Clarence A. Cassidy, and is assigned to American Innotek, Inc. Id. The '354 Application is a continuation-in-part of Application No. 404,734 ("the '734 Application"), filed September 8, 1989, which itself is a continuation-in-part of Application No. 3,848 ("the '848 Application"), filed January 14, 1987. Id. Both the '734 and '848 Applications were abandoned. Id. The '139 Patent expired on May 26, 2009. DX 154 ¶ 6.

The '139 Patent teaches a "containment and disposal bag for human bodily fluids." '139 Patent Abstract. The specification provides the following drawing as representative of the '139 Patent:

Image materials not available for display.

FIG.8

'139 Patent Fig. 8.

The '139 Patent contains one independent claim and 16 dependent claims. '139 Patent 8:39 - 10:30. American Innotek asserts that NYCIB's Piddle Pak with Powder infringes independent Claim 1, and dependent Claims 2-4 and 17 of the '139 Patent.

Independent Claim 1 recites:

1. A containment bag for a fluid comprising water or water-based liquid such as bodily fluids which comprises:

a bag having a hollow interior defined by two sides meeting at opposite edges, a bottom and a top, with said edges and bottom sealed and said top at least partially open to receive said fluid;

a gellable hydrophilic material within said bag, said material becoming fully gelled within thirty seconds of said contact with said fluid when said fluid is deposited in said bag, said gellation serving to essentially completely sequester said fluid and prevent said fluid from thereafter being expelled from said bag;

funnel means within said interior and having an open top, said funnel means being secured to said bag at said top of said bag, and extending downwardly within said interior to a narrower open bottom for conduction of fluid entering said open top through said funnel means and into said bag, with the open bottom of said funnel being disposed intermediate between said top and bottom of said bag, said open bottom being free from attachment to said sides of said bagsuch that flow of any unsequestered fluid within said bag back toward said funnel means acts to close said funnel means to prevent escape of said unsequestered fluid from said bag; and

closure means for closing the top of said bag after introduction of said fluid into said bag.

'139 Patent 8:39-66.

Dependent Claims 2-4 elaborate on the "hydrophilic material" limitation in Claim 1. They recite:

2. A containment bag as in claim 1, wherein said gellable material is a polymer

3. A containment bag as in claim 1 wherein said hydrophilic material is part of a mixture of materials which also contains at least one material selected from the group consisting of enzymes, deodorants, fragrances, human body abnormality indicators and pregnancy indicators.

4. A containment bag as in claim 1 wherein said hydrophilic material is in a powdered, matted, granular, fibrous, foamed, or woven physical form.

Id. at 8:67 - 9:9.

Claim 17 focuses on the shape of the bag, it recites:

17. A containment bag as in claim 1 wherein said bag has the form of an L shape.

Id. at 10:29-30.

Attorneys James W. McClain and Neil Martin prosecuted the '139 Patent. JX 179 at 000277; Tr. 336. Mr. Martin served as Plaintiff's expert witness during trial, and was qualified as an expert in mechanical engineering with specialty knowledge in one-way valves and absorbent products. Tr. 343-44.⁴

The 1968 and 1981 Military Specification For Urine Containment Bags

On April 16, 1968, over 20 years prior to the issuance of the '139 Patent, the United States Air Force issued Military Specification No. MIL-B-83665 ("Mil-Spec A") entitled "Bag, Pilot Relief." DX 70 at 1360. A military specification is a United States Department of Defense ("DoD") required standard used to provide a Government contractor with a product's requirements to satisfy military needs. See 41 C.F.R. §§ 101-29.216-29.217 (defining a military specification for the Department of Defense Index of Specifications and Standards).

The scope of the 1968 Mil-Spec A "cover[ed] the requirements for one type of disposable plastic bag suitable for the collection, retention and temporary storage of urine." DX 70 at G1360. Under Mil-Spec A, the neck of the bag opening had to "incorporate means for preventing spillage when bag is inverted" and "not impede the normal flow input." Id. at G1361. Mil-Spec A further required the bag to contain an absorbent "of either sponge type cellulose (compressed) or granular material not less than 4.75 cubic inches and capable of absorbing 500 [cubic centimeters] of urine." Id. Mil-Spec A also included a series of "performance tests" as "quality assurance provisions" to "assure supplies and services conform[ed] to prescribed requirements." Id. at G1362. These tests included an "inverted leakage test" to be performed prior to closing the bag. Mil-Spec A stated:

4.4.2. Inverted leakage test. The bag shall be filled with a minimum of 550 [cubic centimeters] of water and, without closing, quickly inverted. There shall be no more than 30 [cubic centimeters] of liquid spilled from the opening during a one-minute period.

Id.

On June 2, 1981, the Department of Defense modified the military specification from a 1972 version and issued Military Specification No. MIL-B-83665B ("Mil-Spec B") entitled "Bag, Pilot Relief (Male)." JX 47 at G1378. The scope of Mil-Spec B covered "one type of disposable plastic bag suitable for the collection, retention, and temporary storage of urine" to be "use[d] by all Departments and Agencies of the Department of Defense." Id. The product specifications of Mil-Spec B were nearly identical to Mil-Spec A. Id. at G1379-83. Like Mil-Spec A, Mil-Spec B required a bag made from a flexible plastic film no less than 6 mils, or 0.15 millimeters, thick. Id. at G1379. Mil-Spec B also included the following features that were nearly identical to those required under Mil-Spec A:

3.1.4. Absorbent. Bag shall contain an absorbent of either sponge type compressed cellulose or granular material capable of absorbing 500 [cubic centimeters] of urine.

3.2.1. Design. The finished bag shall be of flat rectangular configurations as depicted in figure 1 [below]. Both sides and one end shall be sealed. The opening or neck of the bag shall incorporate means for preventing spillage when bag is inverted and shall not impede flow input.

3.2.3. Closure. Closure shall be by means of a 28 gage steel (corrosion resistant), 3/8 inch wide (10 [millimeter]) band or wire of equal strength and flexibility imbedded or laminated in vinyl plastic to enable ease of folding or rolling inproducing a positive closure. The wire or band shall form an integral part of the bag during fabrication.

Id.

Included in Mil-Spec B was Figure 1, providing the "Configurations and dimensions of bags," that illustrated the requisite structure and design of the urine containment bag:

Image materials not available for display.

Id. at G1380.⁵ The 1981 Mil-Spec B also contained identical performance test requirements as those in the 1968 Mil-Spec A, including the inverted leakage test. Compare id. at G1381 with DX 70 at G1362.

A military specification indicates which products satisfy the specification requirements by listing in the specification the product's National Stocking Number ("NSN"), a number assigned to a product routinely sold to Government agencies. JX 47 at G1383; Tr. 223. The NSN ensures that agencies "know they're getting the same product every time, or the manufacturer produces the...