DCT

2:18-cv-10568

Acorn West LLC v. Berkley Intl NC LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-10568, C.D. Cal., 12/20/2018
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in California, place the accused products into the stream of commerce in the Central District, and a significant portion of the infringing acts occurred within the district. The complaint also notes a prior, separate case where an attorney for one of the defendants stipulated to a dismissal in this district.
  • Core Dispute: Plaintiff alleges that Defendants’ molded fiber packaging for beverage containers infringes a patent related to multi-part packaging assemblies designed for impact absorption.
  • Technical Context: The technology concerns molded pulp packaging used to ship fragile items like wine bottles, aiming to provide superior protection against drops and impacts compared to prior art designs.
  • Key Procedural History: The complaint states that it was sent to Defendants contemporaneously with its filing to serve as a cease and desist letter, forming the basis for the willfulness allegation. No other significant procedural events, such as prior litigation involving the patent-in-suit or IPR proceedings, are mentioned.

Case Timeline

Date Event
2016-08-08 '924 Patent Priority Date
2018-11-13 '924 Patent Issue Date
2018-12-20 Complaint Filing Date

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

U.S. Patent No. 10,124,924 - “BEVERAGE CONTAINER PACKAGING,” issued November 13, 2018

The Invention Explained

  • Problem Addressed: The patent background describes how prior packaging for beverage containers, including existing molded pulp trays with "ring-shaped crushable elements," could be "ineffective in reducing and/or preventing damage" when a package is subjected to "a large impact and/or multiple large impacts" (’924 Patent, col. 1:32-36).
  • The Patented Solution: The invention is a multi-component packaging assembly, typically comprising a bottom tray, a top tray, and a center support, all made from molded paper pulp (’924 Patent, Abstract). The innovation lies in specific geometric features designed to absorb energy, such as "cross-shaped deformable element[s]" in the bottom tray that contact the base of a bottle and are configured to deform upon impact (’924 Patent, col. 3:35-38; Fig. 4). The complete assembly uses interlocking posts and cavities to secure both the top and bottom of the containers, preventing contact between bottles during transit (’924 Patent, Fig. 1).
  • Technical Importance: The patented design purports to provide "improved impact energy absorption characteristics in relation to existing packaging solutions" (’924 Patent, col. 4:55-58).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (’924 Patent, col. 15:1-15; Compl. ¶17).
  • The essential elements of independent claim 1 are:
    • A bottom tray of molded paper pulp with a plurality of cup-shaped elements, where each element includes one or more deformable elements forming a cross shape.
    • A center support of molded paper pulp disposed between the bottom and top trays, which does not extend to the assembly's outer edge and includes a plurality of center support posts with at least one cross-shaped cavity, and support cavities bounded by the posts to surround a beverage container.
    • A top tray of molded paper pulp including a plurality of vertical members with at least one deformable element, and a plurality of bottle neck accommodating spaces to hold the neck of a beverage container.
  • The complaint alleges infringement of "one or more claims," suggesting a reservation of the right to assert other claims later (Compl. ¶12).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies "container packaging products" sold by Defendants as the Accused Product (Compl. ¶¶9-10).

Functionality and Market Context

  • The Accused Product is a molded fiber (pulp) packaging system for shipping bottles, comprised of interlocking top and bottom trays (Compl. ¶14, p. 4). The material is described as "100% recycled paper and corrugated bails" (Compl. p. 5, screenshot). Plaintiff alleges these products are manufactured, used, offered for sale, and sold in the United States via websites including goberkley.com and moldedfiberpak.com (Compl. ¶¶10, 16). The image provided in the complaint shows the Accused Product used to package a wine bottle (Compl. ¶14, p. 4).

IV. Analysis of Infringement Allegations

’924 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a bottom tray of molded paper pulp including a plurality of cup-shaped elements,... each cup-shaped element including one or more deformable elements forming a cross shape; The Accused Product includes a bottom tray made of molded pulp with cup-shaped elements containing deformable, cross-shaped structures at their base to hold a bottle. ¶18 col. 5:14-25
a center support of molded paper pulp disposed between and in contact with the bottom tray and a top tray of molded paper pulp, the center support not extending to an outer edge... The Accused Product allegedly has a center support made of molded pulp that is located between and contacts the top and bottom trays and does not extend to the outer edge of the full assembly. ¶19 col. 3:4-14
the center support including: a plurality of center support posts comprising at least one cross-shaped cavity; The assembled Accused Product allegedly includes center support posts that form at least one cross-shaped cavity. An overhead view of the top tray is provided to illustrate these posts (Compl. ¶20, p. 9). ¶20 col. 6:58-62
a plurality of beverage container support cavities bounded by the center support posts, the support cavities configured to surround at least a portion of the beverage container; The accused center support posts allegedly form cavities that are configured to surround and support a beverage container. ¶21 col. 6:40-48
the top tray of molded paper pulp including: a plurality of vertical members comprising at least one deformable element; The Accused Product's top tray is alleged to have multiple vertical members that include at least one deformable element. A side-view photograph highlights these alleged vertical members (Compl. ¶23, p. 11). ¶23 col. 15:8-10
and a plurality of bottle neck accommodating spaces each bounded by the at least one deformable element, the bottle neck accommodating spaces each configured to accommodate a neck portion of the beverage container. The Accused Product's top tray is alleged to have spaces bounded by the deformable elements that are configured to accommodate the neck of a bottle. A close-up photograph illustrates these spaces (Compl. ¶24, p. 12). ¶24 col. 15:11-15

Identified Points of Contention

  • Scope Questions: A central question may be whether the accused two-piece product (a top and bottom tray) can meet the three-part structural limitations of Claim 1, which recites "a bottom tray," "a center support," and "a top tray." The complaint alleges the presence of a "center support" (Compl. ¶19), but the provided visuals suggest this support function is created by the interaction of the top and bottom trays, not by a distinct third component as illustrated in some patent figures (e.g., ’924 Patent, Fig. 1, element 130). This raises the question of whether the claim term "a center support" requires a structurally separate element.
  • Technical Questions: The infringement analysis will depend on whether the specific molded features of the accused product meet the geometric limitations of the claim. For example, what evidence establishes that the structures at the base of the accused tray’s cups (Compl. ¶18, p. 7) constitute "deformable elements forming a cross shape" as that term is used in the patent. Similarly, a question exists as to whether the posts on the top tray (Compl. ¶20, p. 9) form a "cross-shaped cavity" as required.

V. Key Claim Terms for Construction

"a center support"

  • Context and Importance: This term appears central to the dispute, as its construction may determine whether the accused two-piece system can infringe the three-component claim. Practitioners may focus on this term because the Defendant will likely argue its product lacks this required element entirely.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim describes the center support functionally as being "disposed between and in contact with the bottom tray and a top tray" (’924 Patent, col. 15:18-20). Plaintiff may argue this positional and functional language does not require a structurally separate piece. The patent specification also discusses alternative center supports made of different materials, such as "corrugated cardboard" (’924 Patent, col. 4:36-37), which could suggest the term is not limited to a single specific form.
    • Evidence for a Narrower Interpretation: The patent’s abstract, Figure 1, and the detailed description consistently refer to the bottom tray (110), top tray (120), and center support (130) as three distinct elements of the assembly (’924 Patent, Fig. 1; col. 3:3-6). Defendant may argue this consistent depiction limits the term "a center support" to a component that is physically separate from the top and bottom trays.

"deformable elements forming a cross shape"

  • Context and Importance: This term defines a key feature of the bottom tray intended to improve impact absorption over the prior art. The degree of similarity between the accused product's features and this claim language will be a critical factual issue.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the deformable elements "may resemble a cross, overlapping bowties, and/or other similar shapes" (’924 Patent, col. 5:17-19). This explicit inclusion of "similar shapes" may support a construction that is not limited to a perfect geometric cross.
    • Evidence for a Narrower Interpretation: The figures provide a specific visual example of the "cross-shaped deformable element" (e.g., ’924 Patent, Fig. 4, element 420). A party could argue that the term should be construed as being limited to this depicted embodiment or structures that are very close in form, and that a feature with a different geometry does not "form a cross shape."

VI. Other Allegations

  • Indirect Infringement: The complaint includes boilerplate language alleging infringement "by directing and controlling others" (Compl. ¶16), but does not provide sufficient detail for analysis of inducement or contributory infringement.
  • Willful Infringement: The complaint alleges willful infringement based on knowledge of the ’924 Patent obtained "at least as early as the receipt of the cease and desist letter" that was sent "contemporaneously" with the filing of the complaint (Compl. ¶¶11, 25). The allegation rests on continued infringement after receiving notice via the complaint itself, which is alleged to be an "objectively high likelihood" of infringement (Compl. ¶26).

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

  • A core issue will be one of structural interpretation: can the three-element language of Claim 1—reciting "a bottom tray," "a top tray," and "a center support"—be read to cover the accused two-piece product, or does the claim require a physically separate third component that is absent from the accused design?
  • A key evidentiary question will be one of geometric correspondence: do the molded features of the accused packaging, particularly the structures at the base of the cups and the posts forming the bottle cavities, possess the specific geometries required by the claim limitations, such as "forming a cross shape" and comprising a "cross-shaped cavity"?