Pregis Corp. v. Doll

• Decision Date: 16 March 2010
• Docket Number: Case No. 1:09cv467(GBL).
• Court: U.S. District Court — Eastern District of Virginia
• Parties: PREGIS CORPORATION, Plaintiff,v.John J. DOLL, Acting Under Secretary for Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, United States Patent and Trademark Office, and Free-Flow Packaging International, Inc., Defendants.

698 F.Supp.2d 584

PREGIS CORPORATION, Plaintiff,v.John J. DOLL, Acting Under Secretary for Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, United States Patent and Trademark Office, and Free-Flow Packaging International, Inc., Defendants.

Case No. 1:09cv467(GBL).

United States District Court,

E.D. Virginia,

Alexandria Division.

March 16, 2010.

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COPYRIGHT MATERIAL OMITTED

Tommy Port Beaudreau, Brian Taylor Sumner, Michael Arthur Umayam, Steven Alerding, Tyler Christopher Southall, Fried Frank Harris Shriver & Jacobson, Washington, DC, for Plaintiff.

Dennis Carl Barghaan, Jr., United States Attorney's Office, Alexandria, VA, Bradley Charles Wright, Christopher Barron Roth, Banner & Witcoff LTD., Washington, DC, for Defendants.

MEMORANDUM OPINION

GERALD BRUCE LEE, District Judge.

THIS MATTER is before the Court on Defendant Free-Flow Packaging International, Inc.'s (“FPI” or “FP”) Motion for Partial Summary Judgment. (Dkt. No. 87.) This case concerns Plaintiff Pregis Corporation's (“Pregis”) action against FPI seeking a declaratory judgment of noninfringement based on its allegation that four of FPI's patents are wholly or partially invalid and FPI's counterclaims alleging infringement of these patents.

There are six issues before the Court. The first issue is whether the August 29, 2005, Settlement Agreement and Release between FPI and non-party Pactiv Corporation (“the FPI-Pactiv Agreement” or “the Agreement”) relieves Pregis ¹ of liability for infringement of the patents-in-suit. The second issue is whether Pregis directly infringed U.S. Patent Nos. 7,325,377 (“Fuss '377 Patent”), 7,526,904 (“Fuss '904 Patent”), 7,536,837 (“Perkins '837 Patent”), and 7,361,397 (“Perkins '397 Patent”). The third issue is whether Pregis has met its burden to prove, by clear and convincing evidence, that the Perkins ' 837 Patent is invalid under 35 U.S.C. §§ 112 and 132 for improperly introducing new matter to the patent application during prosecution. The fourth issue is whether the Perkins '837, Fuss '377, and Fuss ' 904 Patents are invalid under 35 U.S.C. § 102 as being anticipated by U.S. Patent No. 6,209,286 (“the '286 Patent”). The fifth issue is whether Pregis has met its burden to prove, by clear and convincing evidence, that the Perkins '837 and Fuss ' 904 Patents are invalid under 35 U.S.C. § 101 for double patenting. The sixth issue is whether Pregis is entitled to intervening rights under 35 U.S.C. § 252 where Pregis contends that FPI is precluded from recovering damages for Pregis's infringement of the Perkins ' 837 Patent for the period prior to May 6, 2008.

The Court grants FPI's Motion in part and denies the Motion in part. First, the Court grants FPI's Motion as to the Agreement because the patents-in-suit are not the subject of the Agreement and the Agreement does not preclude FPI from asserting infringement claims involving these patents against Pregis. Second, the Court denies FPI's Motion for Summary Judgment on the issue of direct infringement of the four patents because genuine issues of fact exist as to whether the accused devices contain each and every element recited in the asserted claims of the Fuss '377, Fuss '904, Perkins '837, and Perkins '397 Patents. Third, the Court grants FPI's Motion as to Pregis's invalidity defense concerning the Perkins '837 Patent under 35 U.S.C. §§ 112 and 132 because Pregis cannot prove, by clear and convincing evidence, that new matter was improperly introduced during the patent prosecution. Fourth, the Court grants FPI's Motion as to Pregis's invalidity defense under 35 U.S.C. § 102 because Pregis concedes that the '286 Patent is not prior art to the Fuss '377 and Fuss '904 Patents and Pregis cannot establish, by clear and convincing evidence, that the '286 Patent is prior art to the Perkins ' 837 Patent. Fifth, the Court grants FPI's Motion as to Pregis's invalidity defense under 35 U.S.C. § 101 because Pregis cannot establish, by clear and convincing evidence, that these patents claim the same inventions previously patented in the '286 Patent and U.S. Patent No. 6,786,022, respectively.

Sixth, the Court grants FPI's Motion as to intervening rights under 35 U.S.C. § 252 because this issue is irrelevant as none of the patents-in-suit are reissue patents. The Court addresses each issue in turn below.

I. BACKGROUND

This is a patent infringement case. Pregis and FPI are direct competitors in the business of making and selling air cushion products and apparatus. FPI owns several patents related to air cushion technology.

Among the four FPI patents asserted in this case, the Fuss '377, Fuss '904, and Perkins '837 Patents are related to machines used to make air-filled packing cushions. The Perkins '397 Patent concerns the plastic film used in the machines. The Fuss '377 Patent, titled “Apparatus for Making Pneumatically Filled Packing Cushions” and issued on February 5, 2008, is directed to machines making air-filled cushions from plastic film for packaging. Fuss '377 Patent, at [54] (filed May 11, 2004). Asserted Claim 1 of the patent recites an apparatus that comprises a sealing mechanism that contains a “pair of blocks ... wherein at least one of the blocks has a source of heat.” Fuss '377 Patent col.8 ll. 21-24. Similarly, asserted Claim 4 of a related patent, the Fuss '904 Patent,² issued on May 5, 2009, recites a system that comprises an apparatus with a sealing mechanism that contains a “pair of blocks ... wherein at least one of the blocks has a source of heat.” Fuss ' 904 Patent col. 8 ll. 15-19 (filed Oct. 4, 2007). Moreover, Claim 10 of the Fuss ' 904 Patent discloses an apparatus with a “sealing mechanism [that] comprises a source of heat.” Fuss ' 904 Patent col. 8 ll. 50-51.

The Perkins '837 Patent, titled “Apparatus for Inflating and Sealing Pillows in Packaging Cushions” and issued on May 26, 2009, is directed to a system for inflating and sealing air-filled pillows for packaging. Perkins ' 837 Patent, at [54] (filed July 22, 2005). Asserted Claims 1, 8, 13 and 14 of the patent recite a system that contains “drive rollers that cause the plastic film to be gripped at or near the narrow longitudinally extending channel and drawn in a continuous and uninterrupted manner through inflation, sealing and slitting mechanisms in a planar path.” Perkins '837 Patent col. 14 ll. 4-8, 65-66, col. 15 ll. 1-3, 44-48, col. 16 ll. 29-33.

The Perkins '397 Patent, titled “Film Material for Air-filled Packing Cushions” and issued on April 22, 2008, claims preconfigured plastic film used in the machines to make air-filled packing cushions. Perkins '397 Patent, at [54] (filed July 27, 2006). Asserted Claim 1 recites a supply of preconfigured plastic film that comprises “a plurality of generally rectangular inflatable chambers each having three sides closed and a fourth side with an unsealed opening into the longitudinally extending channel, wherein a side opposite the fourth side is defined by a closed longitudinal edge of the film.” Perkins '397 Patent col. 12 ll. 47-51.

In 2003, FPI filed suit against Pactiv Corporation (“Pactiv”), another company engaged in the business of making air-filled cushions, alleging that a certain Pactiv air cushion machine, the Pactiv 5000, infringed FPI's U.S. Patent No. 6,659,150 (“the '150 Patent”). On August 29, 2005, the two parties entered into a written Settlement Agreement and Release i.e., the FPI-Pactiv Agreement. Paragraphs 2 and 3 of the “AGREEMENTS” section set forth the rights and liabilities of the parties with respect to the patents-in-suit:

2. Agreement of Non-Liability and Covenant Not to Sue. FP agrees that Pactiv and its customers, dealers, suppliers, distributors, and users have not past, present or future liability to FP for infringement of any of the existing claims of the Patents or any substantially identical claims that might be included in any reissue patents. FP covenants that it is estopped from asserting and it will not assert liability for the making, selling, or using of any Pactiv product that would infringe the existing claims of the Patents or any substantially identical claims that might be included in any reissue patents. Should FP sue Pactiv ... for infringement of any reissued claims that are not substantially identical to the claims of the Patents, FP agrees that the amount of any damages that might result from said suit would run from the date of the re-issuance of the claims.... FP acknowledges that such agreements and covenant not to sue as set forth herein expressly extend to any third party that acquires by any means or otherwise obtains rights in and to Pactiv's protective packaging business, in whole or in part....

3. FP's Release. FP releases Pactiv and its customers, dealers, suppliers, distributors, and users from any claim, obligation, or liability, whether past, present, or future, for any and all damage and injury sustained by FP as a result of Pactiv's alleged infringement of the Patents.... FP acknowledges that this release as set forth therein expressly extends to any third party that acquires by any means or otherwise obtains rights in and to Pactiv's protective packaging business, in whole or in part.... For the sake of clarity, Pactiv and FP acknowledge that this release is not intended to release claims arising out of infringement, present or future, by any person or entity of (a) FP domestic or foreign patents that are not Patents as defined under this Agreement, or (2) re-issued claims of patents that are not the same or substantially identical to the current claims of the Patents as defined under this Agreement.

(Def.'s Ex. 14 at 2-4.)

In October 2005, Pregis acquired Pactiv's protective packing business and renamed the Pactiv 5000 machines Airspeed 5000. Afterwards, FPI offered to license the Fuss '377, Fuss '904, Perkins '837, and Perkins '397 Patents to Pregis without success. On April 29, 2009, Pregis...