Inline Plastics Corp. v. Easypak, LLC , 799 F.3d 1364 ( 2015 )


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  •   United States Court of Appeals
    for the Federal Circuit
    ______________________
    INLINE PLASTICS CORP.,
    Plaintiff-Appellant,
    v.
    EASYPAK, LLC,
    Defendant-Appellee.
    ______________________
    2014-1305
    ______________________
    Appeal from the United States District Court for the
    District of Massachusetts in No. 4:11-CV-11470-TSH,
    Judge Timothy S. Hillman.
    ______________________
    Decided: August 27, 2015
    ______________________
    ADAM PHILLIP SAMANSKY, Mintz, Levin, Cohn, Ferris,
    Glovsky and Popeo, P.C., Boston, MA, argued for plaintiff-
    appellant. Also represented by PETER CUOMO; BARRY
    KRAMER, DAVID JOHN SILVIA, Edwards Wildman Palmer
    LLP, Stamford, CT.
    CRAIG M. SCOTT, Hinckley, Allen & Snyder LLP, Prov-
    idence, RI, argued for defendant-appellee. Also repre-
    sented by CHRISTINE K. BUSH; ANASTASIA ANDREYEVNA
    DUBROVSKY, Scott & Bush, Ltd., Providence, RI.
    ______________________
    2                      INLINE PLASTICS CORP.   v. EASYPAK, LLC
    Before NEWMAN, CLEVENGER, and DYK, Circuit Judges.
    NEWMAN, Circuit Judge.
    Inline Plastics Corporation sued EasyPak, LLC for in-
    fringement of United States Patent No. 7,118,003 (the
    ’003 patent) and No. 7,073,680 (the ’680 patent), directed
    to tamper-resistant plastic food containers. Following the
    district court’s claim construction, Inline moved for entry
    of final judgment of non-infringement of its ’003 patent,
    on the premise that the claims as construed are not
    infringed. Inline also granted EasyPak a covenant not to
    sue on the ’680 patent. The district court then entered
    final judgment of non-infringement of the ’003 patent,
    dismissed without prejudice EasyPak’s declaratory judg-
    ment counterclaims for invalidity, and dismissed Inline’s
    count for infringement of the ’680 patent with prejudice. 1
    Inline appeals the district court’s construction of the
    claims of the ’003 patent, stating that the terms “frangible
    section” and “tamper evident bridge” were incorrectly
    construed. We conclude that, on the facts and specifica-
    tion of the ’003 patent, the district court erred in limiting
    the claims to a specific embodiment, for the invention as
    claimed is supported by the patent’s broader disclosure.
    We vacate the judgment of non-infringement of the ’003
    patent, and remand for determination of infringement in
    accordance with the corrected claim construction.
    THE ’003 PATENT
    The patented products are plastic food containers hav-
    ing the described tamper-evident and tamper-resistant
    features. The containers have a hinged plastic bridge
    between the top and bottom portions of the container, the
    bridge having a frangible section that must be severed in
    1 Inline Plastics Corp. v. EasyPak, LLC, No. 11-
    11470-TSH, 
    2014 WL 297224
    (D. Mass. Jan. 24, 2014).
    INLINE PLASTICS CORP.   v. EASYPAK, LLC                     3
    order to open the container. Thus, tampering or opening
    of the container is readily evident.
    Figure 1 of the ’003 patent shows an embodiment of
    the tamper-resistant container, having a cover portion 12
    and a base portion 14 joined by a hinge 16. The hinge
    includes a tamper-evident pull strip 18, which upon
    removal severs the connection between cover 12 and base
    14:
    The parties agree that claims 1 and 2 are representative:
    1. A tamper-resistant/evident container compris-
    ing:
    a) a plastic, transparent cover portion includ-
    ing an outwardly extending peripheral flange;
    b) a base portion including an upper peripher-
    al edge forming at least in part an upwardly pro-
    jecting bead extending substantially about the
    perimeter of the base portion and configured to
    render the outwardly extending flange of the cov-
    4                      INLINE PLASTICS CORP.   v. EASYPAK, LLC
    er portion relatively inaccessible when the con-
    tainer is closed; and
    c) a tamper evident bridge connecting the cov-
    er portion to the base portion.
    2. A tamper-resistant/evident container as recited
    in claim 1, wherein the tamper evident bridge in-
    cludes a hinge joining the outwardly extending
    flange of the cover portion with the base portion,
    the hinge including a frangible section, which up-
    on severing, provides a projection that extends out
    beyond the upwardly projecting bead of the upper
    peripheral edge of the base portion, for facilitating
    removal of the cover portion from the base portion
    to open the container.
    EasyPak’s accused containers embody all of the elements
    of claims 1 and 2. However, the EasyPak frangible sec-
    tion has a single score line along which the cover is sev-
    ered from the base, whereas the ’003 patent’s preferred
    embodiment, as shown in Figure 1, has two score lines at
    the frangible section. The district court construed “fran-
    gible section” to mean “a removable tear strip, delimited
    by at least two severable score lines.” Inline Plastics
    Corp. v. EasyPak, LLC, No. 11-cv-11470-TSH, 
    2013 WL 2395998
    , at *10 (D. Mass. Jan. 22, 2013) (“Claim Con-
    struction Order”).
    The district court acknowledged that it limited the
    claims to the embodiment shown in Figure 1, and stated
    that “declarations made during patent prosecution to
    surpass the prior art reveal a definitive focus on the
    removability of the frangible section and thus clearly and
    unambiguously disavow any other embodiment to the
    contrary.” Claim Construction Order, at *6. The district
    court recognized that claims 1 and 2 did not contain a
    limitation to two severable score lines, but reasoned that
    the prosecution history supported this limitation. That is
    the issue on appeal.
    INLINE PLASTICS CORP.   v. EASYPAK, LLC                    5
    DISCUSSION
    The district court’s claim construction is reviewed as
    set forth in Teva Pharmaceuticals USA, Inc. v. Sandoz,
    Inc., 
    135 S. Ct. 831
    (2015). “[W]hen the district court
    reviews only evidence intrinsic to the patent (the patent
    claims and specifications, along with the patent’s prosecu-
    tion history), the judge’s determination will amount solely
    to a determination of law, and the Court of Appeals will
    review that construction de novo.” 
    Id. at 841.
    Relevant
    factual determinations based on extrinsic evidence, such
    as prior art and expert testimony, are reviewed under the
    standard of clear error. 
    Id. A FRANGIBLE
    SECTION
    Applying these criteria, Inline argues that “frangible
    section” was incorrectly construed as requiring at least
    two score lines at the hinge. Inline states that “frangible
    section” should be construed to mean a “section of materi-
    al that includes at least one score line or at least one
    perforation line.” Inline points out that nothing in the
    specification, the prosecution history, or the prior art
    limits “frangible section” by the number of score lines by
    which the frangible section is severed.
    The ’003 specification describes the invention’s fea-
    tures as “intended to prevent and deter opening container
    10 without first removing frangible strip 18 from hinge
    16.” ’003 Patent, col.5 ll.65–67. The specification de-
    scribes the preferred embodiment as:
    Preferably, frangible strip 18 is limited at least in
    part by a pair of parallel score lines 42a, 42b or
    areas that have been weakened or stressed during
    the forming process.
    6                        INLINE PLASTICS CORP.   v. EASYPAK, LLC
    
    Id. at col.6
    ll.24–26. The specification also states that a
    single score line or perforation is an alternative embodi-
    ment:
    Alternatively, the integral hinge 16 could be
    formed with a single score line or perforation line,
    rather than a pair of score lines. In this instance,
    the single score line could be severed to create a
    pair of projections which would be used to open
    the container.
    
    Id. at col.6
    ll.33–37.
    Despite this explicit disclosure of an alternative single
    score line, the district court limited “frangible section” to
    require at least two score lines. No prior art or prosecu-
    tion argument underlays this limitation. The district
    court referred only to the frequency with which the speci-
    fication described the frangible section as having two
    score lines that form a severable strip.
    Here, the preferred embodiment is not described as
    having certain unique characteristics of patentable dis-
    tinction from other disclosed embodiments. Nor are other
    embodiments inadequately described in relation to the
    principles of the invention. Absent such traditional
    aspects of restrictive claim construction, the patentee is
    entitled to claim scope commensurate with the invention
    that is described in the specification. See Phillips v. AWH
    Corp., 
    415 F.3d 1303
    , 1313 (Fed. Cir. 2005) (“[A]lthough
    the specification often describes very specific embodi-
    ments of the invention, we have repeatedly warned
    against confining the claims to those embodiments.”).
    EasyPak states that the prosecution history supports
    construction of “frangible section” to require at least two
    score lines. This argument is devoid of support in the
    prosecution history. The examiner did not require such
    limitation, and it was not a condition of patentability.
    There is no prosecution history disclaimer, which requires
    INLINE PLASTICS CORP.   v. EASYPAK, LLC                    7
    clear and deliberate disavowal. See, e.g., Omega Eng’g,
    Inc. v. Raytek Corp., 
    334 F.3d 1314
    , 1325 (Fed. Cir. 2003);
    Storage Tech. Corp. v. Cisco Sys., Inc., 
    329 F.3d 823
    , 833
    (Fed. Cir. 2003) (“We therefore do not consider the appli-
    cants’ statement to be a clear and unambiguous disavowal
    of claim scope as required to depart from the meaning of
    the term provided by the written description.”).
    During prosecution, the examiner initially rejected
    claims 1 and 2 as anticipated by either of U.S. Patent No.
    5,507,406 (Urciuoli) or German Patent DE 7816353
    (Menshen), and rejections on the ground of obviousness
    were based on these references and also in view of U.S.
    Patent No. 4,535,889 (Terauds). In response, Inline
    emphasized that no reference showed a frangible section
    which, upon severing, “provides a projection that extends
    out beyond the upwardly projecting bead of the upper
    peripheral edge of the base portion for facilitating remov-
    al of the cover portion from the base portion to open the
    container.” App. No. 10/895,687, Amendment and Re-
    sponse 15 (Jan. 17, 2006). Inline described Urciuoli’s
    frangible section as “a perforated line, a groove or the like
    around the receptacle 210 in the outer segment 222.” 
    Id. at 9.
         EasyPak states that Inline distinguished its invention
    from Urciuoli on the basis that Urciuoli’s frangible section
    features a single perforated line. We cannot find such a
    statement in either the reference or the prosecution
    history. Inline’s description of Uricuoli as containing a
    “perforated line, a groove or the like,” was not the basis of
    Inline’s distinction. To the contrary, Inline distinguished
    its invention from Urciuoli on the basis that “[n]owhere in
    [Urciuoli] is there any disclosure, teaching or suggestion
    to modify the container therein to provide a tamper
    evident bridge that connects a cover portion to a base
    portion.” 
    Id. 8 INLINE
    PLASTICS CORP.   v. EASYPAK, LLC
    As depicted in Urciuoli Figure 2, the lid 250 nests
    within the edge or lip 222 of the container portion 210.
    The frangible breakpoint 235 in Urciuoli is located in this
    lip section that lies around the container. To open the
    container of Urciuoli, a user applies pressure to a handle
    215 on the container portion, breaks the frangible section,
    and lifts the lid portion out from its nesting position in
    the container portion.
    The device of the ’003 patent, unlike that of Urciuoli,
    has a hinge formed by outwardly extending edges on both
    the cover and base portions. The distinction between
    Urciuoli and the ’003 device has no relation to the number
    of score lines on a tear strip, but rather to differences in
    the structure and opening mechanism as a whole. The
    Urciuoli structure indeed shows when tampering has
    occurred, but by a different mechanism. The number of
    score lines in the frangible lip of Urciuoli is not part of the
    tamper-evidencing mechanism.
    EasyPak also argues that the declarations that Inline
    submitted to the PTO limit the claims to a tear strip
    having two score lines. That is an inaccurate description
    of the declarations. Inline submitted a declaration of
    Edward Colombo, a Director on Inline’s Board, who
    described Inline’s commercially successful containers as
    INLINE PLASTICS CORP.   v. EASYPAK, LLC                   9
    having a frangible hinge with a removable tear strip.
    App. No. 10/895,687, Decl. of Edward A. Colombo 4 (Jan.
    17, 2006). His statements describe the commercial em-
    bodiments and focused on the long-felt need met by In-
    line’s commercial products:
    The containers disclosed in this patent application
    meet the long-felt needs identified above because
    they utilize a geometry that is suitable for ther-
    moforming containers from a sheet of plastic ma-
    terial. Even more importantly, the containers
    disclosed herein can be thermoformed from a sin-
    gle piece of material, such as a single sheet of
    plastic. This material can be transparent. One of
    the structural features of the container that
    makes this single piece formation possible is the
    skirt that depends down from the peripheral rim
    of the container. This skirt is formed to have a
    vertical height that directly correlates with the
    height of a frangible hinge that includes a tear
    strip.
    
    Id. Mr. Colombo
    did not address the number of score
    lines in the frangible section.
    In correspondence with the PTO, Inline discussed the
    advantages of its structure. Inline explained that by
    having a “cover that is very difficult to open without
    removing the tamper-evident bridge connecting the cover
    to the base portion, pilferage is substantially reduced.”
    App. No. 10/895,687, Supplemental Response 3 (Mar. 3,
    2006). Inline also filed a declaration of its Vice President
    of Sales, August Lanzetta, and a statement from a cus-
    tomer, Arcade Industries, Inc. Both Mr. Lanzetta and
    Arcade Industries describe the Inline containers as fea-
    turing removable tear strips. Those declarations, like
    that of Mr. Colombo, focused on the commercial success of
    Inline’s product, not the scope of the claims.
    10                       INLINE PLASTICS CORP.   v. EASYPAK, LLC
    The patent examiner placed no emphasis on the num-
    ber of severable lines. In allowing the claims, the exam-
    iner explained: “The container also includes a tamper
    evident feature, such as a tear strip, connecting the cover
    portion to the base portion.” App. No. 10/895,687, Final
    Rejection 2 (June 19, 2006). There is no discussion in the
    specification or the prosecution history of any patentabil-
    ity reliance on the number of score lines by which the
    frangible section is severed.
    Thus Inline proposes that the correct construction of
    “frangible section” is “a section of material that includes
    at least one score line or at least one perforation line,” and
    refers to the doctrine of claim differentiation. See Phil-
    
    lips, 415 F.3d at 1315
    (“[T]he presence of a dependent
    claim that adds a particular limitation gives rise to a
    presumption that the limitation in question is not present
    in the independent claim.”). Claim 2 of the ’003 patent,
    recited ante, includes the frangible limitation:
    the hinge including a frangible section, which up-
    on severing, provides a projection . . . for facilitat-
    ing removal of the cover portion from the base
    portion to open the container.
    Claim 4 depends from claim 2 and is specific to the em-
    bodiment of two parallel score lines:
    4. A tamper-resistant/evident container as recited
    in claim 2, wherein the frangible section of the
    hinge is delimited at least in part by a pair of par-
    allel score lines.
    Since the specification explicitly mentions the “alterna-
    tive” of “a single score line or perforation line, rather than
    a pair of score lines,” col.6 ll.33–37, there can be no debate
    concerning the application of the doctrine of claim differ-
    entiation, see Tandon Corp. v. U.S. Int’l Trade Comm’n,
    
    831 F.2d 1017
    , 1023 (Fed. Cir. 1987) (“There is presumed
    INLINE PLASTICS CORP.   v. EASYPAK, LLC                    11
    to be a difference in meaning and scope when different
    words or phrases are used in separate claims.”).
    Thus we correct the district court’s claim construction,
    and construe “frangible section” to mean “a section of
    material that includes at least one score line or at least
    one perforation line.”
    B
    TAMPER EVIDENT BRIDGE
    The term “tamper evident bridge” was not in the ’003
    specification as filed. It was added to the claims during
    prosecution to distinguish the Urciuoli reference. When
    the term was added, Inline explained that Urciuoli does
    not show a tamper evident bridge that connects the cover
    to the base, and that the container in Urciuoli would have
    to be completely redesigned to accommodate the tamper
    evident bridge structure of the ’003 patent.
    The district court construed the term “tamper evident
    bridge” to mean “a structure that connects the lid and
    base portions of the container and also contains a remov-
    able tear strip, delimited by at least two severable score
    lines, which once removed provides evidence that tamper-
    ing has occurred.” Claim Construction Order, at *10.
    Except for the limitation of two score lines, which derives
    from the district court’s construction of “frangible section,”
    we discern no error in this construction. Thus we recon-
    struct “at least two” in the Claim Construction Order to
    “at least one.”
    CONCLUSION
    We have corrected the claim construction, whereby
    claims 1 and 2 are not restricted to the presence of at
    least two score lines or perforation lines. On this claim
    construction, the judgment of non-infringement of the ’003
    patent cannot stand. We vacate that judgment, and
    12                    INLINE PLASTICS CORP.   v. EASYPAK, LLC
    remand for further proceedings based on the correct claim
    construction as set forth herein.
    REVERSED IN PART, VACATED IN PART, AND
    REMANDED
    

Document Info

Docket Number: 14-1305

Citation Numbers: 799 F.3d 1364

Filed Date: 8/27/2015

Precedential Status: Precedential

Modified Date: 1/12/2023