Assurpack LLC v. A&A Global Imports Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Assurpack, LLC (Colorado)
  • Defendant: A&A GLOBAL IMPORTS, INC., d/b/a MARIJUANAPACKAGING.COM (California)
  • Plaintiff’s Counsel: SENN VISCIANO CANGES P.C.; John H. Choi & Associates LLC
• Case Identification: 1:19-cv-02060, D. Colo., 07/17/2019
• Venue Allegations: Venue is alleged to be proper in the District of Colorado because Defendant conducts business in the state, has committed alleged acts of infringement there, and maintains a regular and established place of business in Aurora, Colorado.
• Core Dispute: Plaintiff alleges that Defendant’s child-resistant boxes, when combined with its silicone inserts, infringe a patent related to a safety container system with a removable inner liner.
• Technical Context: The technology addresses the need for child-resistant packaging that also provides a sealed, non-stick, and protective environment for sensitive products, such as those found in the cannabis and pharmaceutical industries.
• Key Procedural History: The complaint alleges Plaintiff provided Defendant with a copy of the patent-in-suit on April 10, 2019, and forwarded a claim chart to Defendant's counsel on June 5, 2019, establishing a basis for pre-suit knowledge.

Case Timeline

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

U.S. Patent No. 10,167,109 - "Safety Container"

The Invention Explained

• Problem Addressed: The patent describes shortcomings in prior art portable containers, noting they may not be sound-proof, leak-proof, or suitable for storing materials that have strong odors or are in liquid or semi-liquid form ('109 Patent, col. 2:5-18). Existing child-resistant containers were also described as potentially difficult for adults to use and concealable only with difficulty ('109 Patent, col. 2:30-34, 2:40-45).
• The Patented Solution: The invention is a two-part container system. It consists of an outer container with a sliding drawer-and-cover mechanism for child resistance, and a separate, removable inner liner ('109 Patent, col. 3:11-20). This inner liner, which can be made of a non-stick material like silicone, has its own box and lid and is designed to provide a sealed, cushioned environment for the contents, protecting them and containing odors ('109 Patent, col. 6:22-32). The liner's removability facilitates cleaning or replacement without affecting the outer container ('109 Patent, col. 3:6-10).
• Technical Importance: This design combines the structural, child-resistant features of a rigid outer shell with the sealing, non-stick, and protective properties of a soft inner liner, addressing a specific need for safely transporting sensitive products ('109 Patent, col. 2:58-63).

Key Claims at a Glance

• The complaint asserts independent claim 9 (Compl. ¶19).
• The essential elements of claim 9 are:
  • A safety container comprising a liner removably disposed within an outer container.
  • The outer container has a drawer that is "slidingly coupled" to a cover.
  • The liner has a "liner box removably coupled to a liner lid."
  • The outer perimeter of the liner box is "complementary with an inner perimeter of the drawer."
  • In a closed state, the liner lid engages the liner walls, and the outer container cover encloses the drawer.
  • In an open state, the outer cover is at least partially removed from the drawer, and the liner lid is removable from the liner box walls.
• The complaint's use of "at least claim 9" suggests the right to assert additional claims is reserved (Compl. ¶19).

III. The Accused Instrumentality

Product Identification

• The "Accused Product" is identified as a combination of "child-resistant boxes ('Accused Box') and silicone inserts for the boxes ('Accused Insert')" (Compl. ¶12, ¶14).

Functionality and Market Context

• The complaint alleges Defendant sells the Accused Box and Accused Insert as separate components through its website, MarijuanaPackaging.com (Compl. ¶3, ¶12, ¶14). It is further alleged that the Accused Insert is advertised for use with the Accused Box (Compl. ¶15). A screenshot from Defendant's website, provided as Exhibit 3, shows the Accused Box and Accused Insert offered for sale (Compl. ¶14). The infringement theory is based on the combination of these two separately sold components forming the complete infringing container (Compl. ¶12).

IV. Analysis of Infringement Allegations

The complaint references a claim chart in Exhibit 4, which was not included in the filing; therefore, the infringement theory is summarized from the complaint's narrative allegations (Compl. ¶17).

The complaint's infringement theory appears to map the "Accused Box" to the "outer container" limitations of claim 9 and the "Accused Insert" to the "liner" limitations (Compl. ¶12, ¶14, ¶19). The Plaintiff alleges that the combination of these two components, which are sold side-by-side, meets all the elements of the claimed safety container (Compl. ¶15, ¶19). The allegation that the Accused Box is "child-resistant" and the Accused Insert is made of "silicone" corresponds to features described in the patent (Compl. ¶12; '109 Patent, col. 2:58-63, col. 6:27-29). The visual evidence in the complaint shows the two components marketed on the same platform, which may support the allegation that they are intended to be used together as a single system (Compl. ¶14, Ex. 3).

• Identified Points of Contention:
  • Scope Questions: A central issue may be whether selling two separate components—the "Accused Box" and "Accused Insert"—can constitute direct infringement of claim 9, which is written to a single, combined "safety container." This raises the question of whether liability would depend on proof of direct infringement (e.g., if Defendant sells the items as a kit) or indirect infringement (if Defendant sells the components separately with the knowledge and intent that customers will combine them).
  • Technical Questions: The analysis may focus on whether the "Accused Insert" meets the claim 9 limitation of a "liner box removably coupled to a liner lid." Evidence will be required to show that the accused silicone insert, which may be a single molded piece, contains two distinct components that are "coupled" in the manner required by the claim.

V. Key Claim Terms for Construction

• The Term: "removably coupled" (referring to the liner box and liner lid)
• Context and Importance: This term is critical to the infringement analysis, as its construction will determine whether a one-piece, integrally molded silicone insert with a living hinge can be considered to have a "liner box" and a "liner lid" that are "coupled." Practitioners may focus on this term because the structure of the Accused Insert will be compared directly to this language.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification suggests that "coupled" is not limited to separately manufactured parts. It states that the hinge coupling the liner box and lid "could be constructed integral to the box 132 and lid 134, for example, formed by molding the box 132 and lid 134 together" ('109 Patent, col. 6:33-36). This language may support an interpretation that includes single-piece, molded designs.
  • Evidence for a Narrower Interpretation: A party could argue that the plain meaning of "coupled" implies the joining of at least two distinct items. Furthermore, the term is modified by "removably," which might be argued to require that the components be capable of being un-coupled, a potential point of ambiguity for an integrally molded part.

VI. Other Allegations

• Indirect Infringement: The complaint pleads inducement by alleging that Defendant sells the Accused Insert with the knowledge that it will be combined with the Accused Box to create the infringing product, pointing to advertisements that the insert is "to be used with the Accused Box" (Compl. ¶15, ¶32-33). Contributory infringement is also alleged, stating the Accused Insert is especially made for use in the Accused Box and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶40-41).
• Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the '109 Patent. The complaint states that Plaintiff sent Defendant a letter with a copy of the patent on April 10, 2019, and later sent a claim chart to Defendant's counsel on June 5, 2019 (Compl. ¶16-17, ¶22).

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

• A core issue will be one of liability for component sales: does Defendant's sale of the "Accused Box" and "Accused Insert" as separate products constitute direct infringement of the claimed combination, or must Plaintiff prove the elements of inducement or contributory infringement to establish liability?
• The case will also turn on a question of definitional scope: can the claim term "removably coupled," as applied to the liner's box and lid, be construed to read on a single, integrally molded silicone insert that functions with a living hinge?
• A key evidentiary question will be one of technical function: what evidence will show that the "Accused Box" possesses the specific "slidingly coupled" drawer-and-cover mechanism required by claim 9, and that customers actually combine the separately sold components to practice the claimed invention?