Timely Inventions LLC v. 3M Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Timely Inventions, LLC (Delaware)
  • Defendant: 3M Company (Delaware)
  • Plaintiff’s Counsel: Lewis Roca Rothgerber Christie LLP
• Case Identification: 2:17-cv-08853, C.D. Cal., 12/07/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts business in the Central District of California and has placed the accused infringing products into the stream of commerce in the district, with sales to businesses including Costco.
• Core Dispute: Plaintiff alleges that Defendant’s COMMAND brand packaging assembly infringes a patent related to dual-use packaging designed for both bulk shipping and in-store retail display.
• Technical Context: The technology concerns convertible cardboard packaging for palletized goods, which aims to reduce waste and handling costs by transforming from a protective shipping container into a point-of-sale display stand.
• Key Procedural History: The complaint does not mention any prior litigation, licensing history, or post-grant proceedings involving the asserted patent.

Case Timeline

Date	Event
2008-12-16	’865 Patent Application Filed (Priority Date)
2011-01-04	U.S. Patent No. 7,861,865 Issued
2017-12-07	Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,861,865 - "PACKAGING ASSEMBLY"

• Patent Identification: U.S. Patent No. 7861865, "PACKAGING ASSEMBLY", issued January 4, 2011.

The Invention Explained

• Problem Addressed: The patent addresses inefficiencies in shipping and displaying consumer products in bulk. Conventional methods often require separate packaging components for shipping (which are then discarded) and display, adding cost and waste (’865 Patent, col. 1:11-20, 1:46-54).
• The Patented Solution: The invention is a packaging assembly where the side panels serve a dual purpose. For shipping, the panels fold upward to form a protective box around products stacked on a pallet. For retail display, the same panels fold downward to hide the pallet and present advertising to consumers, eliminating the need for separate display materials (’865 Patent, Abstract; col. 2:6-19). This convertibility is illustrated in the patent’s figures, which show the assembly in a closed shipping configuration (Fig. 4) and an open display configuration (Fig. 7).
• Technical Importance: This dual-function design intends to "minimize waste and promote efficiency" by combining the shipping container and the display apparatus into a single, reusable structure (’865 Patent, col. 2:16-19).

Key Claims at a Glance

• The complaint asserts infringement of "at least claim 1" of the ’865 Patent (Compl. ¶10).
• Independent Claim 1 of the ’865 Patent recites the following essential elements:
  • A pallet with upper side edges.
  • A plurality of product containers arranged on the pallet.
  • A plurality of side panels, each comprising:
    • A mounting flap.
    • A main flap with a first face and a second face.
    • A fold line between the mounting flap and main flap.
  • The mounting flap is "interposed between the pallet and the plurality of product containers" and affixed to the pallet.
  • During shipment, the main flaps are folded upwardly to "substantially enclose" the product containers.
  • During display, the main flaps are folded downwardly to "cover the pallet and to expose the plurality of product containers."
  • The first face of the main flap is visible when folded downwardly for display, and not visible when folded upwardly for shipping.
• The complaint also alleges infringement of "one or more claims," suggesting a reservation of rights to assert additional claims (Compl. ¶8).

III. The Accused Instrumentality

Product Identification

The accused products are "Defendant's COMMAND packaging assembly which Defendant sells through Costco, and all reasonably similar products" (Compl. ¶10).

Functionality and Market Context

The complaint does not describe the specific structure or operation of the accused COMMAND packaging. It alleges that these products are packaging assemblies used for products sold through major retailers such as Costco (Compl. ¶10). The core of the infringement allegation is that this packaging embodies the patented invention (Compl. ¶¶9-10).

IV. Analysis of Infringement Allegations

The complaint alleges that the Accused Products "meet all of the limitations of at least claim 1 of the '865 Patent" (Compl. ¶10). It further states that a "representative and preliminary infringement claim chart for claim 1" is attached as Exhibit B and incorporated by reference (Compl. ¶11). As this exhibit was not provided, a detailed element-by-element analysis based on the complaint's specific contentions is not possible. No probative visual evidence provided in complaint.

Identified Points of Contention

Based on the claim language and the general nature of the allegations, the dispute may focus on several key technical and legal questions:

• Structural Questions: A central question will be whether the accused COMMAND packaging contains the specific structural elements recited in Claim 1. This includes determining if it has distinct "mounting flaps" and "main flaps," and whether the mounting flaps are "interposed between the pallet and the plurality of product containers" as claimed (’865 Patent, col. 6:18-21).
• Functional Questions: The analysis will likely scrutinize whether the accused packaging’s side panels perform the claimed dual functions. Evidence will be needed to show that the panels fold upward to "substantially enclose" the products for shipping and then fold downward to "cover the pallet" for display (’865 Patent, col. 6:26-34).
• Scope Questions: The interpretation of the term "substantially enclose" could be a point of dispute. The court may need to determine how complete the enclosure must be for the accused product to infringe, and what evidence supports the Plaintiff's allegation that the COMMAND packaging meets this limitation.

V. Key Claim Terms for Construction

"substantially enclose" (from Claim 1)

• Context and Importance: This term defines the required function of the side panels in the shipping configuration. The degree of enclosure required will be critical to determining infringement, as packaging with significant gaps or a less-than-complete structure might be argued to fall outside the claim scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The use of the modifier "substantially" suggests that a hermetic or perfect seal is not required. Plaintiff may argue the term simply requires the panels to form a general, box-like container sufficient for shipping purposes.
  • Evidence for a Narrower Interpretation: The specification describes the upwardly folded panels as defining a "storage cavity" that is "box-shaped," and the assembly includes an "upper lid" that receives the top edges of the main flaps, suggesting a relatively complete, six-sided container (’865 Patent, col. 4:25-28; col. 5:12-16). Defendant may argue this context limits "substantially enclose" to a structure that is almost fully contained.

"cover the pallet" (from Claim 1)

• Context and Importance: This term defines the function of the side panels in the display configuration. The extent of coverage required is central to whether the accused product infringes, especially if its panels only partially obscure the underlying pallet.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states that a reason for side panels is to "hide the pallet from view" (’865 Patent, col. 1:38-39). Plaintiff could argue "cover" should be interpreted in line with this general purpose, not requiring every square inch to be hidden.
  • Evidence for a Narrower Interpretation: The patent describes a preferred embodiment where the "bottom-most supporting pallet is not hidden" to allow for forklift access (’865 Patent, col. 5:35-41). Defendant may use this disclosure to argue that "cover the pallet" does not require complete coverage of all pallet structures, potentially narrowing the term in a way that could avoid infringement depending on the accused product's design.

VI. Other Allegations

Indirect Infringement

The complaint makes a conclusory allegation that Defendant infringes by "directing and controlling others" (Compl. ¶13). However, it does not plead specific facts to support a claim for induced or contributory infringement, such as alleging that Defendant's instructions or manuals direct customers to use the packaging in an infringing manner.

Willful Infringement

Plaintiff alleges that Defendant's infringement "is and has been willful" (Compl. ¶16). The complaint does not provide a factual basis for this allegation, such as asserting that Defendant had pre-suit knowledge of the ’865 Patent.

VII. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case will likely depend on the answers to two central questions:

1. A core issue will be one of structural and functional mapping: Does the accused COMMAND packaging possess the specific components recited in Claim 1—particularly the "mounting flap" interposed between pallet and product—and do those components operate in the claimed dual-mode fashion of folding up to "substantially enclose" for shipping and folding down to "cover the pallet" for display?
2. A key legal question will be one of claim construction: How broadly will the court construe functional terms like "substantially enclose" and "cover the pallet"? The outcome of the construction of these terms may determine whether the specific design of the COMMAND packaging falls within the scope of the patent's claims.