Roberg v. 20TH Century Plastics, Inc.
| Decision Date | 05 January 1999 |
| Docket Number | No. Civ.A. 97-4437(AJL).,Civ.A. 97-4437(AJL). |
| Parties | Paul J. ROBERG, Plaintiff, v. 20th CENTURY PLASTICS, INC., Defendant. |
| Court | U.S. District Court — District of New Jersey |
William J. O'Shaughnessy, McCarter & English, Newark, NJ, James A. Oliff, Michael S. Culver, Caroline D. Dennison, Oliff & Berridge, Alexandria, VA, for plaintiff.
William L. Mentlik, Lerner, David, Littenberg, Krumholz & Mentlik, Westfield, NJ, Roderick G. Dorman, Mark C. Scarsi, Christie Parker & Hale, Pasadena, CA, for defendant.
This case concerns a dispute over a transparent, plastic protective holder for thin items.1 Plaintiff, Paul J. Roberg ("Roberg"), brought suit against the defendant, 20th Century Plastics, Inc. ("20th Century") alleging patent infringement. See Complaint ¶ 1.
Currently pending are a motion for summary judgment filed by 20th Century (the "20th Century Motion for Summary Judgement") and a cross motion for summary judgement filed by Roberg (the "Roberg Motion for Summary Judgment").2 20th Century seeks summary judgment of non-infringement either literally or pursuant to the doctrine of equivalents. See 20th Century Motion for Summary Judgment. Roberg seeks summary judgment of literal infringement. See Roberg Motion for Summary Judgment. For the reasons set forth below, both the 20th Century Motion for Summary Judgment and the Roberg Motion for Summary Judgment are denied.
Roberg resides in Tenafly, New Jersey and is the sole owner of United States Patent 4,958,450 (the "'450 Patent"). See Complaint ¶¶ 2, 4. The '450 Patent was issued on 25 September 1990 and was entitled Protective Holder for Holding Thin or Substantially Thin Items. See id. ¶ 4.
20th Century is incorporated in California with its principal place of business in Brea, California. See Complaint ¶ 3. 20th Century produces and sells photo storage pages (the "Photo I.D. Pages") that are alleged to infringe the '450 Patent. See id. ¶ 5; Anglo Declaration ¶ 2.
Roberg commenced this action on 10 September 1997 by filing a complaint (the "Complaint") alleging patent infringement pursuant to 35 U.S.C. § 271. See Complaint ¶¶ 1, 5-6. The Complaint also seeks treble damages pursuant to 35 U.S.C. § 284, and an injunction barring 20th Century from infringing the '450 Patent. See Complaint pp. 2-3 ¶¶ A-G.
On 3 December 1997, 20th Century filed an answer to the Complaint (the "Answer") and asserted a counterclaim against Roberg requesting a declaratory judgment of non-infringement and seeking attorneys' fees under 35 U.S.C. § 285. See Answer p. 4 ¶¶ 7-9.
On 24 December 1997, Roberg filed an answer to the Counterclaim of 20th Century ("Answer to Counterclaim"). See Answer to Counterclaim. Roberg denied allegations 20th Century does not produce or sell a product that infringes the '450 Patent. See id.
The central issue of both the 20th Century Motion for Summary Judgment and the Roberg Motion for Summary Judgment is the construction of claims one and two of the '450 Patent ("Claim One" and "Claim Two") and the comparison of the properly construed claims to the items produced by 20th Century that are accused of infringing. On 5 January 1998, proceedings were conducted concerning the filing of the motions for summary judgment. During the proceedings, both parties agreed that a Markman3 hearing was not necessary to resolve the issues and that the issues could be resolved on the briefs. See Transcript of 5 January 1998 Proceedings ("Tr. 5 Jan. '98 Proceedings") at p. 3, 1. 11 to p. 4, 1. 3. The parties further agreed the motions for summary judgment could be decided based solely upon the claims (the "Claims"), specification (the "Specification"), and file-wrapper history (the "Prosecution History"). See id. at p. 8, 11. 10-21.
Following completion of all briefing, a hearing was held on 21 December 1998 (the "21 December 1998 Hearing") concerning the 20th Century Motion for Summary Judgment and the Roberg Motion for Summary Judgment.
The '450 Patent and the Photo I.D. Pages concern flexible holder sheets for holding thin items. See '450 Patent; Anglo Declaration ¶ 4 (describing construction of Photo I.D. Pages). Several flexible holder sheets are in the public use. See '450 Patent, "Background of Invention." Holder sheets, other than as contemplated by the '450 Patent, have several disadvantages — difficulty in loading items, entrance of dust or moisture into the holding pocket, and easy dislodgement of items. See id. The '450 Patent was designed to eliminate the disadvantages of the prior art. See id.
The Patent Application was filed on 20 September 1988 and was issued as a patent on 25 September 1990. See '450 Patent. The '450 Patent contains two independent claims. See id.
Claim One provides as follows:
1. A holder for thin items comprising: a backing sheet having a length, and a width; a plurality of strips having a length, a width substantially equal to the width of said backing sheet, each of said strips having an upper edge and a lower edge, said strips being connected to said backing sheet along a longitudinal connection line running substantially parallel to each of said strip edges spaced from said lower edge a distance which is less than the distance said longitudinal connection line is spaced from said upper edge, and said strips each being connected to said backing sheet along a plurality of transverse connection lines running substantially transverse to said longitudinal connection line, each transverse connection line extending toward the upper edge of the corresponding strip from adjacent said longitudinal connection line of a corresponding strip and terminating at a location spaced from said upper edge of the corresponding strip, each of said plurality of strips being located along the length of said backing sheet, such that strips positioned between upper and lower adjacent strips have upper and lower overlapping portions, said upper overlapping portion being defined between the location of termination of said transverse connection lines and the upper edge of the corresponding strip, said lower overlapping portion being defined between the longitudinal connection of the corresponding strip and the lower edge of the corresponding strip, said lower overlapping portion being positionable to overlap said upper overlapping portion of an adjacent strip and said lower overlapping portion being positionable to underlap said upper overlapping portion of the adjacent strip.
Claim One (emphasis added).
Claim Two provides as follows:
2. A holder for thin items comprising: a backing sheet having a length, and a width; a plurality of strips having a length, a width substantially equal to the width of said backing sheet, each of said strips having an upper edge and a lower edge, said strips being connected to said backing sheet along a longitudinal connection line running substantially parallel to each of said strip edges spaced from said lower edge a distance which is less than the distance said longitudinal connection line is spaced from said upper edge, and said strips each being connected to said backing sheet along a plurality of transverse connection lines running substantially transverse to said longitudinal connection line, each transverse connection line extending toward the upper edge of the corresponding strip from adjacent said longitudinal connection line of a corresponding strip and terminating at a location spaced from said upper edge of the corresponding strip, each of said plurality of strips being located along the length of said backing sheet, such that strips positioned between upper and lower adjacent strips have upper and lower overlapping portions, said upper overlapping portion being defined between the location of termination of said transverse connection lines and the upper edge of the corresponding strip, said lower overlapping portion being defined between the longitudinal connection of the corresponding strip and the lower edge of the corresponding strip, said plurality of strips including an uppermost strip connected to said backing sheet by a longitudinal connection line and having a lower overlapping portion extending from said longitudinal connection line to said bottom edge of the uppermost strip.
Claim Two (emphasis added).
As stated, the application for the '450 Patent (the "'450 Patent Application") was filed on 20 September 1988. See '450 Patent Prosecution History attached to Mentlik Certif. as Exh. D (the "Prosecution History") at 7. The '450 Patent Application acknowledged the existence of other flexible holder sheets. See Prosecution History at 10. The prior art, however, was alleged to "[have been] cumbersome to load, allow introduction of dust or moisture, and ... allow inadvertent dislodgement of the contents." See id.
The invention Roberg sought to patent "provide[d] pockets with shallow side walls so that the material above the walls act[ed] as a flap and in cooperation with a like oppositely functioning flap from above [could] function advantageously as a loading guide, a dust and moisture guard, and a security flap." See id. at 10-11.
The initial '450 Patent Application was rejected. See Prosecution History at 32. The claims in the application failed to particularly point out and distinctly claim the subject matter of the invention. See id. at 33. In addition, the Patent Examiner found it would have been obvious, in light of the prior art, to create strips with a plurality of pockets and closures that ran the whole length of a given row. See id. at 34.
Roberg submitted an amendment to the '450 Patent Application. See Prosecution History at 37. In support of the '450 Patent Application, Roberg stated:
One feature of the present invention which is not shown in the [prior art] is that different rows...
To continue reading
Request your trial
-
Barnes & Noble, Inc. v. LSI Corp.
...This thus suggests that the specification's discussion is not meant to be exhaustive. See, e.g., Roberg v. 20th Century Plastics, Inc., 40 F. Supp. 2d 208, 219 (D.N.J. 1999) ("In addition, references in the specification to a preferred embodiment, or an illustrative example, do not limit th......