DCT
2:17-cv-06398
Free Flow Packaging Intl Inc v. Automated Packaging Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Free-Flow Packaging International, Inc. (Delaware)
- Defendant: Automated Packaging Systems, Inc. (Ohio)
- Plaintiff’s Counsel: Latham & Watkins LLP
- Case Identification: 2:17-cv-06398, C.D. Cal., 08/29/2017
- Venue Allegations: Plaintiff alleges venue is proper because Defendant maintains a regular and established place of business in the district, specifically a sales, support, and distribution center in Santa Fe Springs from which it conducts business, employs staff, and ships products.
- Core Dispute: Plaintiff alleges that Defendant’s on-demand inflatable packaging films and the machinery used to inflate them infringe two patents related to the design of preconfigured film webs and integrated inflation systems.
- Technical Context: The technology at issue involves on-demand air cushion packaging systems, a widely used solution for void-fill and product protection in the e-commerce and logistics industries.
- Key Procedural History: The complaint alleges that Defendant had actual knowledge of both asserted patents prior to this lawsuit, based on a complaint served on April 4, 2017, in a separate action in the Northern District of California. The complaint also notes that a related, but not asserted, patent (U.S. Patent No. 7,536,837) was previously litigated, and that the ’743 patent-in-suit was issued after the U.S. Patent and Trademark Office considered disclosures from that prior case, including narrowing amendments.
Case Timeline
| Date | Event |
|---|---|
| 1999-03-09 | Priority Date for ’774 and ’743 Patents |
| 2012-12-04 | U.S. Patent No. 8,323,774 Issues |
| 2015-04-14 | U.S. Patent No. 9,003,743 Issues |
| 2017-04-04 | Alleged Actual Notice of Infringement via Service of a Prior Complaint |
| 2017-08-29 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,323,774 - "Film Material for Air-Filled Packing Cushions"
- Patent Identification: U.S. Patent No. 8,323,774, titled "Film Material for Air-Filled Packing Cushions" (title as corrected), issued December 4, 2012. (Compl. ¶24; ’774 Patent, Certificate of Correction p. 1).
The Invention Explained
- Problem Addressed: The patent describes the challenge of efficiently creating secure, leak-proof seals on inflatable packaging pillows while the film is moving continuously through a machine, which is necessary for compact and efficient on-site production. (’774 Patent, col. 1:4-24).
- The Patented Solution: The invention is a pre-configured plastic film web designed for this process. The film features a longitudinal channel for air inflation that feeds a series of inflatable chambers. A key feature is the inclusion of "preformed seal line elements" within the chambers themselves, which are designed to allow the resulting air cushion to be folded, enabling it to wrap around and protect an object from multiple sides. (’774 Patent, Abstract; col. 9:50-57; Fig. 18).
- Technical Importance: By enabling the inflated cushions to be folded, the design provides more versatile, multi-directional cushioning compared to standard single-chamber air pillows. (Compl. ¶15).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1. (Compl. ¶25).
- Essential elements of claim 1 include:
- A web of material adapted for continuous inflation.
- A longitudinal channel extending along the material.
- A plurality of inflatable chambers, each with three closed sides and one unsealed opening connected to the channel.
- Preformed seal line elements located within the interior of the chambers that permit the chambers to be folded along a line.
- Laterally extending perforations that separate the chambers and extend at least partway across the web.
U.S. Patent No. 9,003,743 - "Apparatus for Inflating and Sealing Pillows in Packaging Cushions"
- Patent Identification: U.S. Patent No. 9,003,743, titled "Apparatus for Inflating and Sealing Pillows in Packaging Cushions", issued April 14, 2015. (Compl. ¶35).
The Invention Explained
- Problem Addressed: The patent addresses the same general problem as the ’774 patent: the need for a compact, continuous, and reliable on-site system for producing air cushions. (’743 Patent, col. 1:25-44).
- The Patented Solution: This patent claims an integrated system that combines a specific type of plastic film with an inflation machine. The machine is defined by its functional components: a "feed mechanism" that draws the film in a "continuous and uninterrupted manner," an "inflation mechanism" that injects air, a "sealing mechanism" with a heating element to seal the pillows, and a "slitting mechanism" with a blade that cuts open the inflation channel after the pillows are sealed. (’743 Patent, col. 2:25-65; Claim 1).
- Technical Importance: Claiming the film and machine as a single system allows for protection of the entire automated process, from the consumable material to the capital equipment that processes it.
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1. (Compl. ¶38).
- Essential elements of claim 1 include:
- (a) A longitudinally extending plastic film with a narrow inflation channel, rectangular chambers, and laterally extending perforations.
- (b) An inflation machine comprising:
- A "feed mechanism" that draws the film in a "continuous and uninterrupted manner" along a planar path.
- An "inflation mechanism" (gas source and outlet) to inject gas into the channel.
- A "sealing mechanism" (electrically energized heating element) to seal the chambers.
- A "slitting mechanism" (blade) that slices the channel open after sealing.
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are Defendant's inflatable packaging products and systems. For the ’774 patent, the accused products are the films themselves, identified as the "Bubbles on Demand" and "AirPouch Twin Pillows" lines. (Compl. ¶¶12-14). For the ’743 patent, the accused instrumentality is the "Accused Automated System," which comprises the "Accused Automated EZ-Tear Webs" (films) used in combination with the "AirPouch® Express 3™" inflation machine. (Compl. ¶¶16, 20-22, 39).
Functionality and Market Context
The accused products are used to create on-demand air-filled cushions for void-fill and protective wrapping in shipping applications. (Compl. ¶¶15, 18). The AirPouch Express 3 machine is described as a "tabletop void-fill system" that works with the accused films to provide "on-demand, easy-to-use air pillows for high packing productivity." (Compl. ¶21). The complaint positions the parties as "direct competitors" in this market. (Compl. ¶4).
IV. Analysis of Infringement Allegations
’774 Patent Infringement Allegations
The complaint includes an annotated image of the accused "AirPouch FastWrap HD Bubbles" product, illustrating "Example axes for folding along preformed seal lines." (Compl. ¶28, p. 9).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a longitudinal channel extending near an edge of the material | The accused films have a longitudinal channel at the top of the material. | ¶27 | col. 7:26-29 |
| a plurality of generally rectangular inflatable chambers | The accused films have multiple rectangular inflatable chambers. | ¶28 | col. 7:16-20 |
| each having three sides closed and a fourth side with an unsealed opening into the longitudinally extending channel | Each chamber has three sealed sides and a fourth side with an unsealed opening into the inflation channel. | ¶28 | col. 13:15-22 |
| and preformed seal line elements within the interior of the chambers to permit the chambers to be folded along a line extending through the seal line elements | The accused films contain preformed seal line elements within the chambers that permit the chambers to be folded. | ¶28 | col. 9:50-57 |
| a plurality of laterally extending perforations separating each chamber or a plurality of chambers | The accused films have laterally extending perforations that separate the chambers. | ¶29 | col. 13:22-28 |
- Identified Points of Contention:
- Functional Questions: A primary point of dispute may be the function of the "preformed seal line elements." The complaint alleges these elements "permit the chambers to be folded." (Compl. ¶28). The key question for the court will be one of evidence: do these structures in the accused product actually enable folding as claimed, or might they serve a different technical purpose, such as modulating air flow, that does not meet the claim's functional requirement?
’743 Patent Infringement Allegations
The complaint provides several annotated images of the accused AirPouch Express 3 machine, including one that identifies the locations of the "Feed mechanism," "Sealing mechanism," and "Slitting mechanism." (Compl. ¶42, p. 15).
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a longitudinally extending plastic film... with at least one row of... chambers... and a plurality of... perforations | The Accused Automated System utilizes "EZ-Tear Webs," which are a plastic film with a longitudinal channel, rectangular chambers, and laterally extending perforations. | ¶40 | col. 14:1-11 |
| (b) an inflation machine for inflating the... chambers | The system includes the AirPouch® Express 3™, a machine for inflating the plastic film. | ¶41 | col. 2:25-29 |
| a feed mechanism that causes the plastic film to be... drawn in a continuous and uninterrupted manner | The machine contains a feed mechanism that pulls the film through the inflation, sealing, and slitting mechanisms in a planar path. | ¶42 | col. 5:46-58 |
| an inflation mechanism that comprises a source of inflation gas and an air outlet | The machine includes an inflation mechanism with a gas source that pumps compressed air into the film. | ¶43 | col. 7:8-13 |
| a sealing mechanism that comprises an electrically energized heating element... to seal the unsealed opening | The machine includes a sealing mechanism with a heating element that heat seals the edge of the filled webs. | ¶44 | col. 8:3-10 |
| a slitting mechanism comprising a blade that slices open the... channel | The machine includes a slitting mechanism with a blade that slices open the narrow channel in the film. | ¶45 | col. 8:51-56 |
- Identified Points of Contention:
- Scope Questions: The complaint states that during prosecution, the ’743 patent was narrowed to "exclude perforations 'separating each chamber or multiple chambers'." (Compl. ¶37). However, asserted claim 1 explicitly requires "a plurality of laterally extending perforations separating the inflatable chambers." This apparent contradiction suggests a complex prosecution history. The case may turn on whether the asserted claims, despite including a "perforations" limitation, are nonetheless sufficiently narrow to overcome the prior art and avoid any prosecution history estoppel stemming from the earlier '837 patent litigation.
- Technical Questions: The infringement analysis will likely scrutinize whether the accused AirPouch Express 3 machine operates in a "continuous and uninterrupted manner" as claimed. The question is whether the machine's actual operation, which may involve micro-pauses or speed fluctuations, meets this limitation.
V. Key Claim Terms for Construction
For the ’774 Patent
- The Term: "preformed seal line elements within the interior of the chambers to permit the chambers to be folded"
- Context and Importance: This functional language is the core distinguishing feature of claim 1. Infringement will depend on whether the structures inside the accused film not only exist but also perform this specific folding function. Practitioners may focus on this term because the defendant could argue that any internal seals are for air management, not folding, thereby avoiding infringement.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the element functionally, stating it "permit[s] the pillows to be folded along one or more of the preformed interior seal lines." (’774 Patent, col. 9:53-55). This could support a reading that covers any internal structure that allows for folding, regardless of its specific shape.
- Evidence for a Narrower Interpretation: The only embodiment shown is in Figure 18, which depicts discrete, linear vertical seals. This could support an argument that the term is limited to structures that resemble this embodiment and whose primary purpose is to create a fold axis.
For the ’743 Patent
- The Term: "drawn in a continuous and uninterrupted manner"
- Context and Importance: This term defines the required operation of the accused machine's feed mechanism. The case may hinge on the precise meaning of "uninterrupted." A defendant could argue that any stop-start or intermittent motion, however brief, falls outside the claim's literal scope.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's summary describes the machine as one where "the web of plastic film is moved continuously and without any interruption and/or intermittent stopping of the film transport during the sealing operation." (’743 Patent, col. 2:14-18). This language suggests the invention is meant to be distinguished from systems that clearly operate in a start-stop fashion.
- Evidence for a Narrower Interpretation: The language is absolute. A defendant may argue that "uninterrupted" allows for no pauses or fluctuations in film movement whatsoever, a standard that may be difficult for a real-world machine to meet.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement. The two counts asserted are for direct infringement. (Compl. ¶¶23, 34).
- Willful Infringement: The complaint alleges that Defendant has had actual knowledge of its infringement of both the ’774 and ’743 patents since at least April 4, 2017, when Plaintiff served a complaint in a prior lawsuit filed in the Northern District of California. (Compl. ¶¶30, 46). This allegation of pre-suit knowledge forms the basis for the willfulness claim and the request for treble damages. (Compl. p. 19, ¶D).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of validity and claim scope in light of prosecution history. Given the complaint's preemptive discussion of a prior litigation involving a related patent, a key question for the court will be whether the asserted claims of the ’743 patent are patentably distinct from the art considered during prosecution and how prosecution history estoppel may limit the doctrine of equivalents.
- A key evidentiary question for the ’774 patent will be one of functional infringement: does the evidence show that the accused film's internal seals actually "permit the chambers to be folded" as required by the claim, or is there a fundamental mismatch in technical function?
- For the ’743 patent, the dispute may turn on a definitional question of operation: can the accused machine's feeding process be characterized as "continuous and uninterrupted," or does its real-world operation include pauses or speed variations that place it outside the literal scope of the claim?