DCT
2:20-cv-01583
Imprenta Services Inc v. Nicholas Patrick Karll
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Imprenta Services, Inc. (Texas)
- Defendant: Nicholas Patrick Karll (California); Eco Packaging Solutions (California)
- Plaintiff’s Counsel: Frederic M. Douglas
- Case Identification: 2:20-cv-01583, C.D. Cal., 02/18/2020
- Venue Allegations: Venue is asserted based on Defendants maintaining a principal business office within the district and a substantial part of the acts giving rise to the claims occurring there.
- Core Dispute: In a declaratory judgment action, Plaintiff seeks rulings of non-infringement of Defendant’s patent, a declaration of inequitable conduct, and correction of inventorship, stemming from a prior business relationship between the parties.
- Technical Context: The lawsuit concerns child-resistant metal containers, a product category with applications in regulated industries such as cannabis, where secure and compliant packaging is required.
- Key Procedural History: The action was precipitated by a cease-and-desist letter sent by Defendants’ counsel to Plaintiff on the same day the patent-in-suit issued, accusing Plaintiff of infringement and creating a justiciable controversy for this declaratory judgment suit. The complaint’s primary focus is on the parties' pre-patent collaboration, alleging the named inventor derived the invention from Plaintiff’s president and failed to disclose this material information to the U.S. Patent and Trademark Office.
Case Timeline
| Date | Event |
|---|---|
| 2018-01-05 | Defendant Karll signs quotation for "round tin containers" with a "glued" inner plate. |
| 2018-01-12 | Plaintiff's President, Mike Sanchez, emails Karll a new design omitting the glued plate. |
| 2018-01-12 | Defendant Karll responds to Sanchez's email, approving of the new design. |
| 2018-04-12 | Earliest priority date for U.S. Patent No. 10,513,375. |
| 2019-12-24 | U.S. Patent No. 10,513,375 issues. |
| 2019-12-24 | Defendants' counsel sends cease-and-desist letter to Plaintiff. |
| 2020-02-18 | Complaint for Declaratory Judgment filed. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,513,375 - "Metal Child Resistant Container"
Issued December 24, 2019
The Invention Explained
- Problem Addressed: The patent seeks to address shortcomings in existing child-resistant packaging, such as plastic pill bottles which may leach chemicals, and single-use packaging that is not resealable or easily recyclable ( Compl. ¶23; ’375 Patent, col. 1:30-51). The invention aims to provide a durable, resealable, and recyclable metal container that meets child-resistance standards while better preserving its contents ( Compl. ¶23; ’375 Patent, col. 2:6-17).
- The Patented Solution: The patent describes a multi-component cap assembly for a metal container. The assembly features a metal outer cap and a metal inner cap that are coupled together. To open the container, a user must perform multiple actions, such as pushing the outer cap down and twisting it. This action engages the couplers between the caps (or an intermediate plate), allowing the assembly to be unscrewed from the container body. The design prevents the container from being opened by simply twisting the outer cap without applying downward pressure (’375 Patent, Abstract; col. 7:46-54).
- Technical Importance: The technology provides a child-resistance mechanism specifically adapted for metal containers, which offer advantages over plastic in terms of recyclability and preservation for certain products (’375 Patent, col. 2:6-17).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 18 as being at issue (Compl. ¶16, 20).
- Independent Claim 1 recites the following essential elements:
- A container body with a central longitudinal axis, a closed base, an open top, and an exterior wall.
- A cap assembly, which includes:
- A metal inner cap.
- A metal outer cap coupled to the inner cap.
- A metal plate disposed between the inner and outer caps, which is rotationally and axially fixed relative to the outer cap.
- A first coupler (a groove) on the inner cap.
- A second coupler (a tongue) on the plate that engages the groove.
- An operational mechanism where the outer cap must be moved to a "second position" for the couplers to engage and allow the caps to be fixed for rotation together.
- The complaint does not mention dependent claims but is brought against the patent generally.
III. The Accused Instrumentality
Product Identification
The products at issue are Plaintiff Imprenta's "metal child-resistant containers with novel cap assemblies" (Compl. ¶10, 25).
Functionality and Market Context
- The complaint describes a prior version of a container that included a "glued" piece inside a screw lid cap (Compl. ¶12; Compl. Ex. A at 14).
- It then describes an "improved design" conceived by Imprenta's president, Mike Sanchez, which "omitted the gluing of the inner plate" and replaced it with a "second inner lid indicated in red" (Compl. ¶13). An email dated January 12, 2018, explains this new design was developed to solve a manufacturing problem where the adhesive on the glued plate might fail before drying (Compl. ¶13; Compl. Ex. B at 16).
- A technical diagram attached to the January 12, 2018 email provides an exploded view of this allegedly non-infringing design, showing a multi-part lid assembly with distinct red and yellow components between the outer cap and the container base (Compl. Ex. B at 17).
- The complaint alleges these containers are marketed to customers in the cannabis industry (Compl. Ex. D at 27).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff (Imprenta) alleges its products do not infringe. The core of this allegation is that its products lack a key element recited in the asserted claims.
’375 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged (Non)-Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a metal plate disposed between the inner cap and the outer cap, wherein the plate is rotationally and axially fixed relative to the outer cap | Plaintiff's containers fail to incorporate a "metal plate" as recited in the claims. The design allegedly developed by Plaintiff's president and used in its products omits a glued inner plate in favor of a different "second inner lid" construction. | ¶20 | col. 23:17-21 |
| a second coupler coupled to the plate | As Plaintiff's products allegedly lack the "metal plate," they consequently cannot have a coupler that is "coupled to the plate" as required by the claim. | ¶20 | col. 23:22-26 |
Identified Points of Contention
- Scope Questions: The central dispute is definitional: does one of the components in Imprenta’s allegedly improved "second inner lid" design (Compl. Ex. B at 17) meet the definition of the claimed "metal plate"? Defendants may argue that a component in the accused product, such as the yellow piece in the diagram, functions as the claimed "plate" even if Imprenta calls it part of a "second inner lid."
- Technical Questions: The case raises a fundamental question of inventorship and derivation. The complaint alleges that the design claimed in the ’375 Patent was based on confidential information and inventive contributions from Plaintiff's president, Mike Sanchez, which were provided to the named inventor, Nicholas Karll, before the patent's priority date (Compl. ¶¶13-14, 24, 30-31). The evidence for this is presented in emails and diagrams attached as exhibits (Compl. Ex. B, C).
V. Key Claim Terms for Construction
- The Term: "metal plate"
- Context and Importance: This term is the lynchpin of Imprenta's non-infringement argument. Imprenta contends its products do not contain this element (Compl. ¶20). The resolution of the infringement question may depend entirely on how the court construes this term in light of the accused product's specific multi-part lid structure. Practitioners may focus on this term because its construction will determine whether a key element of the asserted claims is present in the accused products.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for a broader definition might point to specification language describing the plate functionally, such as "a disk, cap (e.g., middle cap) or other structure" (col. 13:4-6), and its role in housing the couplers. Defendants could argue that any distinct metal component located between the inner and outer caps that is fixed to the outer cap and carries the coupler meets this functional description, regardless of its specific name or shape.
- Evidence for a Narrower Interpretation: Imprenta may argue that the claim language itself creates a distinction, listing "a metal inner cap," "a metal outer cap," and "a metal plate" as three separate and distinct elements (col. 23:14-21). They could argue that construing one of the components of their "second inner lid" as the "plate" would improperly conflate distinct claim elements. Imprenta may also point to embodiments like the "locking plate (or middle lid) 110" as showing a specific type of structure intended by the term "plate" (’375 Patent, col. 7:17-18).
VI. Other Allegations
- Indirect Infringement: Plaintiff seeks a declaratory judgment that it has not indirectly infringed the ’375 Patent (Compl. ¶21). This is in response to the cease-and-desist letter, which accused Imprenta of "encouraging or inducing others" to infringe (Compl. Ex. D at 27).
- Willful Infringement: Plaintiff denies any infringement, and therefore denies willfulness. The willfulness issue arises from the defendant's cease-and-desist letter, which alleges that Imprenta's products "appear to have been knowingly and willfully copied" and threatens treble damages (Compl. Ex. D at 27).
- Inequitable Conduct and Inventorship: The complaint contains extensive allegations that form the basis for separate causes of action. Plaintiff alleges that Defendant Karll committed inequitable conduct by failing to disclose Mike Sanchez's inventive contributions and the January 12, 2018 design documents to the PTO during prosecution (Compl. ¶¶23-27). Plaintiff further alleges that Mike Sanchez is the true inventor, or at least a co-inventor, and seeks to have the patent's inventorship corrected pursuant to 35 U.S.C. §256 (Compl. ¶¶29-32).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to turn on two primary, interrelated questions that go to the heart of patent law: validity and infringement.
- A foundational issue will be one of inventorship and enforceability: Can Imprenta prove with clear and convincing evidence that its president, Mike Sanchez, was an inventor of the claimed subject matter and that the named inventor, Nicholas Karll, engaged in inequitable conduct by withholding this material information from the patent office with deceptive intent? The answer could render the entire patent unenforceable.
- A key infringement question will be one of claim construction and scope: Can the claim term "metal plate" be construed to read on the multi-component "second inner lid" structure in Imprenta's accused products? The outcome of this construction will likely be dispositive of the infringement claim.