Crown Packaging Technology v. Rexam Beverage Can

• Decision Date: 17 March 2009
• Docket Number: No. 2008-1340.,No. 2008-1284.,2008-1284.,2008-1340.
• Citation: 559 F.3d 1308
• Parties: CROWN PACKAGING TECHNOLOGY, INC. and Crown Cork & Seal USA, Inc., Plaintiffs-Appellants, v. REXAM BEVERAGE CAN CO., Defendant-Cross Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

559 F.3d 1308

CROWN PACKAGING TECHNOLOGY, INC. and Crown Cork & Seal USA, Inc., Plaintiffs-Appellants, v. REXAM BEVERAGE CAN CO., Defendant-Cross Appellant.

No. 2008-1284.

No. 2008-1340.

United States Court of Appeals, Federal Circuit.

March 17, 2009.

Dale M. Heist, Woodcock Washburn LLP, of Philadelphia, Pennsylvania, argued

for plaintiffs-appellants. With him on the brief were Lynn A. Malinoski, Chad E. Ziegler, Aleksander J. Goranin, and Aaron B. Rabinowitz.

George P. McAndrews, McAndrews, Held & Malloy Ltd., of Chicago, Illinois, argued for defendant-cross appellant. With him on the brief were Steven J. Hampton, Gerald C. Willis, Jr., Paul W. McAndrews, Heather Ann Bjella, Sarah Anne Kofflin, and Patrick V. Bradley.

Before BRYSON, GAJARSA, and MOORE, Circuit Judges.

MOORE, Circuit Judge.

Crown Packaging Technology Inc. and Crown Cork & Seal USA, Inc. (collectively, Crown) appeal from a decision of the United States District Court for the District of Delaware granting Rexam Beverage Can's (Rexam) motion for summary judgment of noninfringement of claim 14 of U.S. Patent No. 6,935,826 (the '826 patent). See Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 531 F.Supp.2d 629 (D.Del.2008) (Crown II). Rexam cross-appeals the prior grant of Crown's motion for summary judgment dismissing Rexam's counterclaim for infringement of U.S. Patent No. 4,774,839 (the '839 patent). See Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 498 F.Supp.2d 718 (D.Del.2007) (Crown I). Because we conclude that there is a material issue of fact regarding the function of the "annular reinforcing bead" of claim 14 of the '826 patent, we reverse and remand the district court's grant of summary judgment of noninfringement. Additionally, because we are bound by our holding in Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed.Cir.1983)—that the marking requirement of 35 U.S.C. § 287(a) does not apply when only method claims are asserted—we reverse the district court's grant of summary judgment dismissing Rexam's counterclaim based on a failure to mark.

BACKGROUND

Crown and Rexam are both in the business of selling can ends and bodies to fillers¹ associated with major beverage companies. Crown asserts that the Crown "Superend" can end revolutionized the low-margin beverage can market because the Superend uses up to ten percent less metal than a conventional can end.² Following the introduction of the Superend, Rexam designed its own can end, the Rexam End, to compete with the Superend.

Crown filed this action on August 18, 2005, alleging that the Rexam End infringes claim 14 of the '826 patent. Rexam answered and filed counterclaims on November 3, 2005.³ Crown moved for partial summary judgment dismissing Rexam's counterclaim based on a failure to mark under 35 U.S.C. § 287(a). The district court issued an amended order on July 30, 2007 granting Crown's motion for summary judgment and dismissing Rexam's counterclaim. Following additional briefing and oral arguments, the district court issued a claim construction order on May 17, 2007. On January 22, 2008, the district court granted Rexam's motion for summary judgment of noninfringement, holding that no genuine issue of material fact existed as to whether the Rexam End infringes claim 14 of the '826 patent under the doctrine of equivalents. A final judgment and order to this effect issued on March 31, 2008. Crown timely appealed.⁴

DISCUSSION

Predicate to addressing the merits of any case appealed to this court, the court must be satisfied jurisdiction exists. We raised the issue of jurisdiction with the parties during oral argument and invited supplemental briefing. In a single letter brief, both parties argue in favor of the court's jurisdiction. The district court issued an amended order on July 30, 2007 granting Crown's motion to dismiss Rexam's counterclaim based on a failure to mark. On March 31, 2008, the district court issued a final judgment resolving all of the remaining claims and counterclaims. This final judgment did not mention the earlier dismissal of Rexam's counterclaim I. Because our jurisdiction is limited to appeals from final judgments of the district courts, 28 U.S.C. § 1295(a)(1), "we are obligated to consider whether there is a final judgment." Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1362 (Fed.Cir.2003). The Supreme Court defined a final judgment as "one which ends the litigation on the merits and leaves nothing for the court to do but execute the judgment." Catlin v. United States, 324 U.S. 229, 233, 65 S.Ct. 631, 89 L.Ed. 911 (1945).

Here, there is no question that the final judgment document entered by the district court ended the litigation on the merits—a decision had been rendered as to every claim; no claim remained outstanding. In this critical way, the present case is distinct from iLOR, LLC v. Google, Inc., 550 F.3d 1067 (Fed.Cir.2008), and SafeTCare Manufacturing, Inc. v. Tele-Made, Inc., 497 F.3d 1262 (Fed.Cir.2007), in which the district court entered a final judgment without disposing of all of the pending claims. See iLOR, 550 F.3d at 1071-72; SafeTCare, 497 F.3d at 1266. Moreover, this court has recognized that an earlier, non-appealable order may be considered to be "merged" into a subsequent final judgment. See Glaros v. H.H. Robertson Co., 797 F.2d 1564, 1573 (Fed.Cir.1986). Even so, there must be a "clear and unequivocal manifestation by the trial court of its belief that the decision made, so far as it is concerned, is the end of the case." Pandrol USA, 320 F.3d at 1362-63. We agree with the parties that the district court clearly intended the March 31, 2008 final judgment to resolve and dispose of all the claims and counterclaims in this action. "Were we to send this portion of the case back to the district court for the entry of an amended judgment, little more than delay and waste of judicial resources would be accomplished, in direct contravention of the rationale of Bankers Trust." Id. at 1378. Accordingly, we have jurisdiction under 28 U.S.C. § 1295. Having satisfied ourselves as to our jurisdiction, we now turn to the merits.

I. Claim 14 of the '826 patent—the doctrine of equivalents

We review a district court's grant of summary judgment de novo. Hilgraeve Corp. v. McAfee Assocs., Inc., 224 F.3d 1349, 1352 (Fed.Cir.2000). Summary judgment is proper only "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). Furthermore, a determination of noninfringement, either literal or under the doctrine of equivalents, is a question of fact. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed.Cir. 2000). "Thus, on appeal from a grant of summary judgment of noninfringement, we must determine whether, after resolving reasonable factual inferences in favor of the patentee, the district court correctly concluded that no reasonable jury could find infringement." Id.

A finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product was insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). One way of doing so is by showing on a limitation by limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39-40, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). The function-way-result test is particularly suitable for analyzing the equivalence of mechanical devices, such as the ones at issue here. Id. at 39, 117 S.Ct. 1040.

Crown's appeal focuses on the "annular reinforcing bead" element of claim 14 of the '826 patent. Claim 14 depends from independent claim 13.⁵ The claims recite:

13. A metal can end for use in packaging beverages under pressure and adapted to be joined to a can body by a seaming process so as to form a double seam therewith using a rotatable chuck comprising first and second circumferentially extending walls, said first and second chuck walls forming a juncture there between, said can end comprising;

a peripheral cover hook, said peripheral cover hook comprising a seaming panel adapted to be formed into a portion of said double seam during said seaming operation;

a central panel;

a wall extending inwardly and downwardly from said cover hook, a first portion of said wall extending from said cover hook to a first point on said wall, said first wall portion adapted to be deformed during said seaming operation so as to be bent upwardly around said juncture of said chuck walls at said first point on said wall, a second portion of said wall extending from said first point to a second point forming a lowermost end of said wall, a line extending between said first and second points being inclined to an axis perpendicular to said central panel at an angle of between 30° and 60°.

14. The end according to claim 13, further comprising an annular reinforcing bead⁶ connected to said wall at said second point, said annular reinforcing bead connecting said wall to said central panel.

Figure 4 of the '826 patent shows an embodiment of the can top according to the invention.⁷

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The anti-peaking bead of figure 4—which appears as a groove covering the outer circumference of the can top—is identified by reference numeral 25. Once a can body is filled, a can top is placed on top of the body, where it is secured in place. The can top is then sealed—or seamed—to the can body as shown in figures 6 and 7:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

After the can top is secured in place, a first...