Kemco Sales, Inc. v. Control Papers Co., Inc.
| Decision Date | 07 April 2000 |
| Docket Number | PLAINTIFFS-APPELLANTS,No. 99-1349,DEFENDANTS-APPELLEES,POLY-PAC,99-1349 |
| Citation | 208 F.3d 1352,54 USPQ2d 1308 |
| Parties | (Fed. Cir. 2000) KEMCO SALES, INC. AND KENNETH R. MAKOWKA,, v. CONTROL PAPERS COMPANY, INC., AMKO PLASTICS, INC. AND REGALENVELOPE (ALSO KNOWN ASINDUSTRIES), |
| Court | U.S. Court of Appeals — Federal Circuit |
Timothy Robert Dewitt, Arnold & Porter, of Washington, Dc, argued for plaintiffs-appellants. With him on the brief was Christopher F. Winters.
Peter L. Berger, Levisohn, Lerner, Berger & Langsam, of New York, New York, argued for defendants-appellees. With him on the brief was Barry E. Negrin. Of counsel on the brief was Edward Dreyfus, Stranger & Dreyfus, of Mountainside, New Jersey.
Before Plager, Lourie, and Clevenger, Circuit Judges.
Kemco Sales, Inc. and Kenneth R. Makowka (collectively "Kemco") appeal from the decision of the United States District Court for the District of New Jersey granting Control Papers Company, Inc.'s motion for partial summary judgment that it does not infringe claim 27 of U.S. Patent 5,405,197, either literally or under the doctrine of equivalents, and denying Kemco's corresponding cross-motion. See Kemco Sales, Inc. v. Control Papers Co., No. 97-Civ. -1291 (WGB) (D.N.J. Sept. 29, 1998) ("Kemco I"). Kemco also appeals from the district court's decision denying Kemco's motion for reconsideration and entry of final judgment. See Kemco Sales, Inc. v. Control Papers Co., No. 97-Civ. -1291 (WGB) (D.N.J. Nov. 9, 1998) ("Kemco II"). Because the district court did not err in its rulings, we affirm.
The '197 patent is directed to plastic security envelopes that are "tamper-evident," i.e., they indicate when a thief has breached the integrity of the envelope and removed the valuables contained within it. See '197 patent, col. 1., ll. 16-35. The written description explains that the security afforded by prior art tamper-evident envelopes using adhesive-type materials is easily circumvented by applying low temperatures to the adhesive region, thereby causing the seal to separate from the envelope; after the valuables are removed, the envelope eventually reseals on its own, leaving no evidence of tampering. See id. at col. 1, l. 64 to col. 2, l. 12. The claimed invention solves this problem by employing two sealing means, one of which serves as the primary closing mechanism of the envelope, the other of which indicates any attempt to open the envelope. See id. at col. 2, ll. 18-39. The tamper-evident sealing means is comprised of fragile, temperature-sensitive adhesive and backing material. See generally id. at col. 7, l. 30 to col. 9, l. 10. Claim 27, the only claim at issue, recites the following:
27. A tamper-evident sealing system for an envelope made at least partially of plastic material comprising:
[an] envelope pocket having an opening therein through which contents can be placed into the pocket before the opening is closed;
[a] 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;
[a] first, adhesive, sealing means between the closing means and plastic envelope material for sealing the closing means to the plastic envelope material; and
[a] 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.
Id. at col. 13, l. 67 to col. 14, l. 19 ().
Figures 1-4, which have been modified slightly for clarity, illustrate one of the preferred embodiments of the claimed envelope as follows [Tabular or Graphical Material Omitted]
As shown in Figure 1's dorsal view and Figure 2's side view, security envelope 10 is substantially flat, constructed from a single sheet of material folded upon itself, such that the front panel 20 extends beyond rear panel 18 to provide closing flap 36. This mode of construction provides the bottom of the envelope 12, as well as side seams 14 and 16 that are heat-welded or glued shut, thereby creating the envelope's pocket. See id. at col. 4, ll. 25-29. The pocket is accessed through the opening 22 at edge 19. First sealing means 30, which is comprised of adhesive tape 30a and a protective, peelable liner 30b that covers 30a, is located on closing flap 36 and seals the envelope after the liner is removed. Second sealing means 40, which is likewise comprised of a layer of adhesive tape 40a and a protective, peelable liner 40b, is attached to flap 36 and extends beyond it, serving to provide the tamper-evident seal after the protective liner is removed. Figures 3 and 4 illustrate the process of closing this embodiment. Figure 3 shows a side view of the envelope just prior to closing, in which protective liners 30b and 40b have been removed. Figure 4 depicts the envelope after adhesive tape 30a has been placed against back panel 18, thereby sealing the envelope, and after adhesive tape 40a has been placed against back panel 18, thereby conferring the tamper-evident seal.
Figures 5 and 6 depict another preferred embodiment of the claimed invention as follows: 1 [Tabular or Graphical Material Omitted]
In this embodiment, the envelope 110 and its flap 136 are separate components. Because the flap is separate from the envelope, it has one set of sealing means (130 and 140) on each side of the flap to attach it to the envelope. One set seals the envelope in substantially the same manner as the other preferred embodiment: the protective liners 130b and 140b are removed, and adhesive tapes 130a and 140a are placed against back 118 of the envelope. The same procedure is followed for the other set, except that adhesive tapes 130a and 140a are placed against front 120 of the envelope. The sealed envelope is depicted in Figure 6.
The accused device, Control Papers' TripLok envelope, is structurally similar to the claimed invention and also utilizes two adhesive layers. As in the claimed invention, one layer is principally responsible for sealing the envelope and the other indicates any evidence of tampering. Unlike the claimed invention, the TripLok is closed by way of a dual-lip structure that seals together via an internal adhesive. Figures 1-4 depict accused security envelope 10 as follows [Tabular or Graphical Material Omitted]
Figures 1 and 2 illustrate the basic structure of the TripLok. The TripLok has front and back panels (12 and 14, respectively) and chamber 20 for holding valuables. The upper portions of the front and back panels are referred to as "lips" (22 and 24, respectively), and header 30, to which header adhesive 36 is attached, is made of tamper evident material and is itself attached to the outside of lip 24. Internal adhesive 26 is attached to the inside of lip 24. Both the internal and header adhesives are covered by a single peelable release liner 37. Figure 2 shows the two exposed adhesive layers once the release liner is removed, and Figure 3 shows the step of sealing the envelope closed by placing the lips together, thereby binding them via the internal adhesive 26. Figure 4 illustrates the final closure step, whereby header 30 is folded over the sealed envelope, allowing header adhesive 36 to adhere to the outside of lip 22.
Kemco sued Control Papers, alleging, inter alia, infringement of the '197 patent. Control Papers moved for partial summary judgment of noninfringement, and Kemco cross-moved for summary judgment that claim 27 was literally infringed by the TripLok envelope. 2 See Kemco I, slip op. at 2. The district court first construed claim 27 and held that the "plastic envelope closing means" limitation was written in means-plus-function language as set forth in 35 U.S.C. 112, 6. 3 See id. at 16-17. Turning to the written description and accompanying drawings, the court further concluded that the structure associated with the closing means is a flap that folds over the opening and is secured to one or more of the outside panels of the envelope. See id. at 18-20, 22-23.
Based on its claim construction, the district court held that no reasonable jury could find that the TripLok literally infringes claim 27, as the dual-lip structure that closes the TripLok is not identical to, or an equivalent of, a fold-over flap. See generally id. at 23-28. Citing Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 46 USPQ2d 1752 (Fed. Cir. 1998), the court further held that no reasonable jury could find that the TripLok infringes under the doctrine of equivalents, as the inventor of the motion for partial summary judgment of noninfringement and denied Kemco's corresponding cross-motion. See Kemco I, slip op. at 30-31. The court also denied Kemco's motion for reconsideration, or alternatively, for entry of judgment under Fed. R. Civ. P. 54(b). 4 See Kemco II, slip op. at 2. The parties settled the remaining nonpatent claims, and the court entered final judgment. Kemco appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (1994).
Summary judgment is appropriate...
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