North American Container, Inc. v. Plastipak Packaging, Inc., 071405 FFED, 04-1306

Docket Nº:04-1306, 04-1307
Party Name:NORTH AMERICAN CONTAINER, INC., Plaintiff-Appellant, v. PLASTIPAK PACKAGING, INC., AMERICAN BOTTLING COMPANY, INC., CNC CONTAINER, KRAFT FOODS, INC., SHASTA BEVERAGES, INC., THE KROGER COMPANY, and WIS-PAK PLASTICS, INC., and SILGAN PLASTICS CORPORATION, and THE CLOROX COMPANY, and RECKITT BENCKISER INC., and BARTON BRANDS, LTD., and AMERICAN NATIO
Case Date:July 07, 2005
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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NORTH AMERICAN CONTAINER, INC., Plaintiff-Appellant,

v.

PLASTIPAK PACKAGING, INC., AMERICAN BOTTLING COMPANY, INC., CNC CONTAINER, KRAFT FOODS, INC., SHASTA BEVERAGES, INC., THE KROGER COMPANY, and WIS-PAK PLASTICS, INC.,

and

SILGAN PLASTICS CORPORATION,

and

THE CLOROX COMPANY,

and

RECKITT BENCKISER INC.,

and

BARTON BRANDS, LTD.,

and

AMERICAN NATIONAL CAN GROUP, INC.,

and

SUIZA FOODS CORPORATION,

and

COCA-COLA BOTTLING, CO. CONSOLIDATED, COCA-COLA ENTERPRISES, CONTINENTAL PET TECHNOLOGIES, INC., OWENS-ILLINOIS, INC., OWENS-BROCKWAY PLASTIC PRODUCTS, INC., SOUTHEASTERN CONTAINER, INC., and WESTERN CONTAINER CORPORATION,

and

CONSTAR, INC., AB-TEX BEVERAGE CORPORATION, and DR. PEPPER BOTTLING COMPANY OF TEXAS,

and

ALBERTSON'S INC.,

and

SAFEWAY, INC., SCHMALBACH-LUBECA PLASTIC CONT AINERS USA, INC., THE CAMPBELL SOUP COMPANY, KNOUSE FOODS COOPERATIVE, INC., and THE J.M. SMUCKER COMPANY,

and

UDV NORTH AMERICA, INC.,

and

BCB USA CORP. (now known as Cott Beverages, Inc.),

and

TROPICANA PRODUCTS, INC.,

and

HEINZ USA,

and

COLGATE-PALMOLIVE COMPANY,

and

THE PERRIER GROUP OF AMERICA, INC.,

and

QUAKER OATS COMPANY,

and

DANONE INTERNATIONAL BRANDS, INC. and GREAT BRANDS OF EUROPE, INC., Defendants-Cross Appellants.

Nos. 04-1306, 04-1307

United States Court of Appeals, Federal Circuit

July 7, 2005

Appealed from: United States District Court for the Northern District of Texas Judge Sam A. Lindsay

Martin B. McNamara, Gibson, Dunn & Crutcher LLP, of Dallas, Texas, argued for appellant. With him on the brief were Thomas C. McGraw and Robert S. Case, of Dallas, Texas, and Glenn K. Beaton, of Denver, Colorado.

Douglas A. Freedman, Latham & Watkins LLP, of Chicago, Illinois, and Ernie L. Brooks, Brooks Kushman P.C., of Southfield, Michigan, argued for defendants-cross appellants.

With Douglas A. Freedman on the brief for Owens-Illinois, Inc., et al., was Peter N. Witty; Robert P. Latham, Jackson Walker L.L.P., of Dallas, Texas, for defendant cross-appellant Reckitt Benckiser Inc. Of counsel on the brief were Brian A. Kilpatrick, Stephen A. Kennedy, and Robert C. Klinger; Phillip B. Philbin, Haynes & Boone LLP, of Dallas, Texas, for defendant-cross appellant Barton Brands, Ltd.; Dale M. Heist, Woodcock Washburn LLP, of Philadelphia, Pennsylvania, for defendants-cross appellants Constar, Inc., et al. With him on the brief were Kathleen A. Milsark and Steven D. Maslowski; Dan D. Davison, Fulbright & Jaworski L.L.P., of Dallas, Texas, for defendant-cross appellant Albertson's Inc. Of counsel was Michael J. Fogarty, III; George D. Moustakas, Harness, Dickey, Pierce, PLC, of Troy, Michigan, for defendants-cross appellants The Campbell Soup Company, et al. With him on the brief was Stanley M. Erjavac; David Lesht, Cook, Alex, McFarron, Manzo, Cummings & Mehler, Ltd., of Chicago, Illinois, for defendant-cross appellant Tropicana Products, Inc. With him on the brief was Raymond M. Mehler; Regis E. Slutter, Burns, Doane, Swecker & Mathis, LLP, of Alexandria, Virginia, for defendant-cross appellant Heinz USA; Bryan S. Hales, Kirkland & Ellis LLP, of Chicago, Illinois, for defendant-cross appellant Colgate-Palmolive Company. With him on the brief was Christopher R. Liro; Bruce S. Sostek, Thompson & Knight, of Dallas, Texas, for defendant-cross appellant The Perrier Group of America, Inc. With him on the brief were Max Ciccarelli and Richard L. Wynne, Jr.; Charles S. Cotropia, Sidley Austin Brown & Wood LLP, of Dallas, Texas, for defendants-cross appellants Danone International Brands, Inc., et al. Of counsel was Kelly J. Kubasta .

With Ernie L. Brooks on the brief for defendants-cross appellants Plastipak, et al. was Earl J. LaFontaine; Peter L. Costas, Pepe & Hazard LLP, of Hartford, Connecticut, for defendant-cross appellant Silgan Plastics Corporation; Warren J. Krauss, Sedgwick, Detert, Moran & Arnold LLP, of San Francisco, California, for defendant-cross appellant The Clorox Company. With him on the brief was Frederick D. Baker . Of counsel was Kirk C. Jenkins; Steven H. Hoeft, McDermott, Will, & Emery, of Chicago, Illinois, for defendant-cross appellant American National Can Group, Inc.; Theodore Stevenson, III, McKool Smith, P.C., of Dallas, Texas, for defendant-cross appellant Suiza Foods Corporation; and David L. Joers, Crutsinger & Booth, of Dallas, Texas, for defendant-cross appellant Quaker Oats Company.

Before LOURIE, BRYSON, and LINN, Circuit Judges.

LOURIE, Circuit Judge .

North American Container, Inc. ("NAC") appeals from the decision of the United States District Court for the Northern District of Texas granting summary judgment of noninfringement in favor of Plastipak Packaging, Inc. and other similarly situated manufacturers and distributors of blow-molded plastic bottles (collectively "Plastipak") of United States Reissue Patent 36,639 ("the '639 patent"). N. Am. Container, Inc. v. Plastipak Packing Inc., No. 3:99-CV-1749-L (N.D. Tex. Nov. 28, 2003) (" Summary Judgment "). NAC also appeals from the district court's decision granting summary judgment that reissue claims 29-42 of the '639 patent are invalid for violating the rule against recapture of previously surrendered subject matter. Plastipak cross-appeals from the district court's decision granting summary judgment that the '639 patent is not invalid for anticipation by U.S. Patent 4,335,821 to Collette. Because we agree with the district court's construction of the claim limitation "generally convex," we affirm the summary judgment of noninfringement for all accused bottles found not to meet that limitation. We further affirm the summary judgment of invalidity of reissue claims 29-42. Because we modify, however, the district court's construction of the claim limitation "reentrant portion," we vacate the summary judgment of noninfringement for all accused bottles found not to meet only that limitation, and remand for the court to determine whether the limitation is met based on our modified claim construction. The cross-appeal is dismissed.

BACKGROUND

I. The '639 Patent

The '639 patent, entitled "Plastic Container," was reissued on April 4, 2000, in the name of Aziz A. Okhai as inventor, and appellant NAC as assignee. The patent specification discloses a one-piece plastic bottle which improves resistance to creep and other forms of deformation by controlling (1) the presence of unoriented polymer chains in the base portion of the bottle and (2) the thickness of the walls of the reentrant portion. '639 Patent, col. 7, ll. 34-40. These improvements also allow the patented bottle to be manufactured with less material than otherwise, thus lowering its production costs. Id.

The one-piece bottles disclosed in the specification are manufactured by blow molding. Blow molding is a process whereby an injection-molded preform is placed in a mold of the desired finished bottle shape. The preform, which is much smaller than the finished bottle, is shaped like a laboratory test tube. The preform is heated and stretched with a stretch-rod until the bottom surface of the preform touches the bottom surface of the mold. Pressurized gas is then injected into the hot preform so that it expands and takes the shape of the mold when it cools.

A shortcoming of pre-existing blow-molded bottles is that a carbonated beverage contained within the bottle can create sufficient internal pressure to distort, or even fracture, the base portion. Id. , col. 1, ll. 52-59. The susceptibility to failure in the base portion of these bottles is inherent in blow molding, where the bottom surface of the preform is stretched and comes into contact with the bottom surface of the mold. I Once the bottom surface of the preform comes into contact with the mold, the polymer chains in that portion become "frozen" in an unoriented state. Id. Unoriented polymer chains are generally weaker than oriented chains. Id. Moreover, the transition from portions of the bottle having unoriented material to portions having oriented material is relatively abrupt in pre-existing bottles, further creating weak points and making the base portion susceptible to stress cracking. Id. , col. 1, ll. 59-62.

The invention addresses these shortcomings by controlling the distribution of unoriented material in the base portion and by introducing more material into the reentrant portion. Id. , col. 4, ll. 29-31. Shown in figure 2, in its most basic form, the patented bottle is composed of a cylindrical side wall (11), an upper neck portion, and a base portion (12). Id. , col. 3, ll. 5-9. The base portion is further composed of convex semicircular portions (14, 16) extending downwardly from the side wall and converging at the mid-point of the base to form a cusp (18). Id. , col. 3, ll. 9-14. The embodiment in figure 2 improves upon pre-existing bottles by limiting the amount of unoriented material in the base portion to only that at the point of the cusp (18). Id. , col. 3, ll. 21-25.

(Image Omitted)

The specification further teaches that the base portion can be strengthened by truncating the cusp (18), as shown by the dotted line (78). By truncating the cusp, the sides of the re-entrant portion diverge at a relatively large angle and improve the bottle's resistance to deformation. Id. , col. 4, 31-34. Moreover, truncating the cusp strengthens the bottle by making the walls of the re-entrant portion thicker.1 Id. , col. 4, ll. 15-20. Finally, molding the bottle to have a truncated re-entrant portion creates an area of unoriented, relatively thick material that provides a gradual transition between unoriented and oriented material. Id. , col. 4, l. 66 to col. 5, l. 2. This, in turn, improves the base portion's resistance to stress cracking. Id. , col...

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