Graphic Packaging Int'l, LLC v. Inline Packaging, LLC

• Decision Date: 01 October 2019
• Docket Number: File No. 15-cv-03476 (ECT/LIB)
• Parties: Graphic Packaging International, LLC, Plaintiff, v. Inline Packaging, LLC, Defendant.
• Court: U.S. District Court — District of Minnesota

Graphic Packaging International, LLC, Plaintiff, v. Inline Packaging, LLC, Defendant.

File No. 15-cv-03476 (ECT/LIB)

UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

October 1, 2019

OPINION AND ORDER

Barry Herman, Womble Bond Dickinson (US) LLP, Baltimore, MD; David R. Boaz, Womble Bond Dickinson (US) LLP, Raleigh, NC; James F. Vaughan and Christine H. Dupriest, Womble Bond Dickinson (US) LLP, Atlanta, GA; and Felicia J. Boyd, Barnes & Thornburg LLP, Minneapolis, MN, for Plaintiff Graphic Packaging International, LLC.

Kyle R. Kroll, Brent A. Lorentz, and Justice Ericson Lindell, Winthrop & Weinstine, P.A., Minneapolis, MN, for Defendant Inline Packaging, LLC.

Plaintiff Graphic Packaging International owns three design patents for microwave susceptor sleeves. These sleeves are used for heating and carrying food products including "Hot Pockets." In this case, Graphic accuses Defendant Inline Packaging of infringing the three design patents. The Parties seek claim construction pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Graphic asks that its patents be construed simply as the visual appearance of the susceptor sleeves as shown in the claim drawings. Contending that the susceptor sleeves' designs are primarily functional, Inline seeks a construction giving Graphic's patents no scope. The law seems to discourage no-scope constructions like the one Inline seeks, and the availability of alternative designs, among other considerations, shows that the sleeves' patented designs are not primarily functional. Therefore, Graphic's proposed construction will be adopted.

I

Three design patents for microwaveable susceptor sleeves are at issue in this case: U.S. Patent Nos. D694,106 ("the '106 patent"), D694,124 ("the '124 patent"), and D727,145 ("the '145 patent"). Microwave susceptor sleeves are paperboard products with special properties that allow them to be used to heat food, including but not limited to "Hot Pockets." The '106 patent, entitled "Carton Blank," includes one figure and claims "the ornamental design for a carton blank, as shown and described." Joint App'x for Claim Const. ("JA") 859-61. That single figure appears as follows:

Image materials not available for display.

JA 859. The '124 patent, entitled "Carton," includes sixteen figures and similarly claims "[t]he ornamental design for a carton, as shown and described." JA 862-73. Two of those figures are included below, depicting the sleeve's assembled appearance:

Image materials not available for display.

FIG. 2

Image materials not available for display.

FIG. 9

JA 864, 869. The '145 patent, also entitled "Carton Blank," includes one figure and again claims "[t]he ornamental design for a carton blank, as shown and described." JA 874. That figure appears as follows:

Image materials not available for display.JA 876. The term "blank" refers to the flat, not-put-together version of the "carton," which refers to the three-dimensional "sleeve." Cf. Inline Mem. at 27 [ECF No. 114] (discussing "when the sleeve blank is turned into the sleeve construct").

The Parties, particularly Inline, discuss several elements of Graphic's design patents at some length in their submissions. Though not all of these elements are discussed in this opinion and order, a brief description of each helps in understanding the design patents and the Parties' arguments about claim construction (and, though less important for claim construction, serves as a starting point for identifying and defining the design patents' elements going forward). Though these features are depicted in the design patents, these terms and descriptions are not.

Tear strip and cut-out: Though claimed only in a utility patent, this feature allows approximately half of the sleeve to be removed during consumption. It is represented in the design patents by a broken (dotted) line that runs parallel to the top edge of the sleeve.

Gussets or minor panels: This refers to the "side walls" of the sleeve and also could be described as the faces connecting the front and back major panels.

Apertures: These are cut-outs along the minor panels. Here, the apertures are circular holes.

Main panels: This refers to the comparatively larger front and back faces or panels of the sleeve.

Seam: The seam is the place where the edges of the material in the two-dimensional "blank" come together and overlap to form the three-dimensional "carton."

End panels: The two end panels are the pieces, connected to the major panels but not the minor panels, that come together to form the "bottom" of the sleeve that provides support for the food content when the product is in use.

Tab and slot: These terms refer to the T-shaped slot along one end panel and the trapezoidal tab that fits into the T to bring the two end panels together to form the bottom of the sleeve.

In June 2015, Graphic filed this patent-infringement case against Inline in the District of Delaware. ECF No. 1. Graphic claimed that Inline infringed the three design patents described above and a related utility patent, U.S. Patent No. 8,872,078 ("the '078 patent"). Compl. ¶¶ 8-12; JA 821. (The next month, Inline filed a separate case against Graphic in the District of Minnesota, asserting trade-secret and antitrust claims. Those claims are not part of this case.) This case was ordered transferred from the District of Delaware to the District of Minnesota in September 2015. From April 2016 until July 2018, the case was stayed pending completion of inter partes review of the related utility patent. All fifty-three claims in the '078 utility patent were determined to be unpatentable as obvious, so only the '106, '124, and '145 design patents remain.

II

A

Whereas a utility patent claims "any new and useful process, machine, manufacture, or composition of matter," 35 U.S.C. § 101, a design patent claims the overall ornamental design of—essentially, the appearance of—an article of manufacture, 35 U.S.C. § 171. "[W]hereas a utility patent often includes a substantial textual specification culminating in various claims delineating the elements of the invention, a design patent is often little more than figures—various pictures of the entire article incorporating the [single] claimed design." Safco Prods. Co. v. Welcom Prods., Inc., 799 F. Supp. 2d 967, 975 (D. Minn.2011); see 37 C.F.R. § 1.153(a) ("No description, other than a reference to the drawing, is ordinarily required."); id. ("More than one claim is neither required nor permitted."). The claim in a design patent is limited to what is shown in the application drawings, and the Federal Circuit has said that "[d]esign patents have almost no scope." In re Mann, 861 F.2d 1581, 1582 (Fed. Cir. 1988).

"An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed"—that's claim construction. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995), aff'd, 517 U.S. 370 (1996) (citation omitted). Claim construction, analogous to statutory interpretation, is "a matter of law exclusively for the court." Id. at 977. "The second step is comparing the properly construed claims to the [design] accused of infringing." Id. at 976 (citation omitted). With design patents, "the patented and accused designs are compared for overall visual similarity: '[I]f, in the eye of an ordinary observer . . . two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.'" Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)). "It is the appearance of a design as a whole which is controlling in determining infringement. There can be no infringement based on the similarity of specific features if the overall appearance of the designs are dissimilar[.]" OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997).

"The intrinsic record in a patent case is the primary tool to supply the context for interpretation of disputed claim terms. V-Formation, Inc. v. Benetton Grp. SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576. 1582 (Fed. Cir. 1996). Such intrinsic evidence includes the drawings in the design patents themselves, as well as the "prosecution history," which consists of "the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent." Phillips v. AWH Corp., 415 F.3d 1303, 1314, 1317 (Fed. Cir. 2005). Courts may also rely on "extrinsic evidence"—that is, "all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317 (citations omitted). It also includes evidence pertaining to related patents in the same family. Microsoft Corp. v. Multi-Tech. Sys., Inc., 357 F.3d 1340, 349-50 (Fed. Cir. 2004). Extrinsic evidence "can shed useful light on the relevant art, but is less significant than the intrinsic record in determining the legally operative meaning of disputed claim language." C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quotation marks and citation omitted); see Phillips, 415 F.3d at 1317. Extrinsic evidence is considered "less reliable" than intrinsic evidence and may not be used to contradict the intrinsic evidence. Phillips, 415 F.3d at 1318; Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1373 (Fed. Cir. 1998). Expert testimony "generated at the time of and for the purpose of litigation . . . can suffer from bias that is not present in intrinsic evidence." Phillips, 415 F.3d at 1318. So while "expert testimony can be useful to a court for a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works,...