Perimeter Brand Packaging LLC v. Reckitt Benckiser LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Perimeter Brand Packaging, LLC (Delaware)
  • Defendant: Reckitt Benckiser, LLC (Delaware), Reckitt Benckiser plc (United Kingdom), Reckitt Benckiser Group plc (United Kingdom)
  • Plaintiff’s Counsel: Devlin Law Firm LLC
• Case Identification: 1:20-cv-00623, D. Del., 05/08/2020
• Venue Allegations: Venue is alleged to be proper as to Reckitt Benckiser, LLC because it is incorporated in Delaware, and as to the foreign UK corporations because they may be sued in any judicial district.
• Core Dispute: Plaintiff alleges that Defendant’s Lysol-branded moistened wipes packaging infringes patents related to moisture retention seals for plastic containers.
• Technical Context: The technology concerns sealing mechanisms in consumer product packaging, specifically for products like moistened wipes, where preventing moisture loss is critical for product efficacy and shelf life.
• Key Procedural History: The complaint details significant pre-suit history. Plaintiff alleges it notified Defendant of infringement in April 2018. In response, Defendant provided two prior art references in June 2018 and declined a license. Plaintiff then submitted these references to the U.S. Patent and Trademark Office (PTO) for supplemental examination of the ’621 patent. In October 2019, the PTO issued a certificate confirming that the references did not raise a substantial new question of patentability for the challenged claims. This PTO proceeding may influence subsequent validity disputes.

Case Timeline

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

U.S. Patent No. 7,703,621 - "Moisture Retention Seal"

The Invention Explained

• Problem Addressed: The patent describes a problem with prior art plastic packaging, where canisters and closures often do not seal properly due to manufacturing imprecision (e.g., being "out-of-round") or wide dimensional tolerances (’621 Patent, col. 2:37-49). This unreliability required either expensive secondary seals (like induction or heat seals) or high initial moisture content to prevent products like wet wipes from drying out (’621 Patent, col. 2:50-60).
• The Patented Solution: The invention proposes a package seal formed by multiple points of contact and interference between the canister and the closure, without requiring gaskets or secondary seals (’621 Patent, Abstract). A key feature is a "top seal" created when a protrusion from the closure presses down on and deflects a "flexible top portion" of the canister, creating an upward biasing force that enhances the seal (’621 Patent, col. 7:4-26; Fig. 2B). The design also includes other partial seals, such as a "microbead seal," to create a "tortuous path" for vapor to escape (’621 Patent, col. 5:1-5).
• Technical Importance: This approach aimed to create a reliable, low-cost moisture seal using only molded plastic parts, accommodating the inherent variability of high-volume manufacturing processes like blow-molding (’621 Patent, col. 5:8-12).

Key Claims at a Glance

• The complaint asserts independent claim 1.
• Claim 1 recites a package comprising:
  • a closure having an interior surface and a protrusion extending from it;
  • a canister having a flexible top portion;
  • the protrusion contacts the flexible top portion, applying a "generally downward contact force" to form a top seal;
  • the protrusion deflects the flexible top portion "generally downwardly from a rest position";
  • the deflection angle is "less than about ninety degrees when connected."
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶33).

U.S. Patent No. 8,297,461 - "Moisture Retention Seal"

The Invention Explained

• Problem Addressed: As a continuation of the application leading to the ’621 patent, this patent addresses the same challenges of creating effective, low-cost moisture seals in high-volume plastic packaging (’461 Patent, col. 1:18 - col. 2:65).
• The Patented Solution: The invention again describes a package where a closure and canister interact to form a seal. Independent claim 1 focuses on a protrusion with a "leading surface" that contacts and deflects a "flexible top portion" of a "molded canister" to form a seal around its entire circumference (’461 Patent, col. 12:35-51). Independent claim 12 describes a similar structure with a "non-planar interior surface" on the closure and a protrusion with a "leading edge" that abuts the canister's flexible top portion (’461 Patent, col. 13:22 - col. 14:21). The core inventive concept of a deflection-based seal remains central.
• Technical Importance: This patent further refines and claims different aspects of the sealing technology introduced in the ’621 patent family, focusing on the specific geometry and interaction of the sealing components (’461 Patent, col. 7:1-14).

Key Claims at a Glance

• The complaint asserts independent claims 1 and 12.
• Claim 1 recites a package comprising:
  • a closure with an interior surface and a protrusion with a "leading surface";
  • a "molded canister" with a "flexible top portion";
  • the leading surface contacts and deflects the flexible top portion downward from a rest position by a deflection angle "less than about ninety degrees";
  • the protrusion abuts the flexible top portion "to seal the opening about its entire circumference."
• Claim 12 recites a package comprising:
  • a closure with a "non-planar interior surface" having upper and lower portions;
  • a canister with a flexible top portion;
  • the lower portion of the interior surface forms a protrusion with a "leading edge" that abuts the flexible top portion, applying a downward force to create a top seal.
• The complaint reserves the right to assert other claims, including dependent claims (Compl. ¶44).

III. The Accused Instrumentality

Product Identification

The "Accused Instrumentalities" are identified as the packaging for Reckitt Benckiser's Lysol brand moistened wipes (Compl. ¶21).

Functionality and Market Context

• The complaint alleges that the Accused Instrumentalities include a closure and container with sealing features that practice the inventions of the patents-in-suit (Compl. ¶21). Plaintiff alleges that it performed high-definition computed tomography (CT) scans that revealed the infringing design (Compl. ¶21).
• The complaint alleges that the design of the accused Lysol packaging was copied from a licensed Clorox product that was marked with the ’621 patent number (Compl. ¶22). A visual comparison chart is referenced to support this allegation (Compl. ¶22; Exhibit 5). The complaint asserts that Lysol and Clorox are the top two brands in the U.S. market for moistened wipes, suggesting the commercial importance of the accused products (Compl. ¶20).

IV. Analysis of Infringement Allegations

The complaint references preliminary infringement claim charts (Exhibits 14 and 15) that were not publicly filed with the initial complaint. The infringement theory is therefore summarized from the complaint’s narrative allegations.

The core of the infringement allegation is that the accused Lysol packaging incorporates the patented sealing mechanism. The complaint alleges that this was not an independent development but rather direct copying of a licensed and patent-marked Clorox product (Compl. ¶22, ¶34). To support this, the complaint references a comparative chart allegedly showing the similarities between the licensed Clorox product and the accused Lysol product (Compl. ¶22; Exhibit 5). This image from Exhibit 5 visually juxtaposes the two products to highlight their alleged design parallels (Compl. ¶22).

Further, the complaint states that pre-suit correspondence sent to the Defendant included annotated CT scan images demonstrating that the accused canisters and closures meet the limitations of claim 1 of the ’621 Patent (Compl. ¶23). An example image from Exhibit 6 shows a cross-sectional view from a CT scan of an accused product, with annotations purportedly pointing out the infringing features (Compl. ¶23). These allegations suggest that the accused Lysol packaging features a closure that mechanically interacts with the canister rim in a manner that allegedly meets the claim limitations concerning a "protrusion," a "flexible top portion," and the "deflection" that creates the seal.

• Identified Points of Contention:
  • Scope Questions: A central question will be whether the components of the accused Lysol packaging fall within the scope of the patent claims. For instance, does the accused canister have a "flexible top portion" that is "deflected" by the closure "protrusion" in the manner described and claimed? The degree of flexibility and the precise nature of the deflection required by the claims will be points of dispute.
  • Technical Questions: Factually, the case may turn on whether the accused product's seal operates based on the specific deflection mechanism claimed in the patents. Defendant may argue its product achieves a seal through a different mechanism, such as a simple friction fit, that does not involve the claimed "downward contact force" causing a specific "deflection angle" in a "flexible" member. The plaintiff’s CT scans will be key evidence, subject to challenge regarding their interpretation.

V. Key Claim Terms for Construction

For the ’621 and ’461 Patents

• The Term: "flexible top portion" (of the canister)

• Context and Importance: This term is the core of the invention. The infringement analysis for both patents hinges on whether the accused canister has a part that is "flexible" enough to be "deflected" by the closure to create the claimed seal. The defendant will likely argue for a narrow definition requiring a specific degree of flexibility or a distinct, separately-acting flexible element, while the plaintiff will argue for a broader definition covering any canister rim that exhibits the claimed deflection upon closure.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The claims themselves do not quantify the required flexibility, only that the portion is capable of being deflected "downwardly from a rest position" (’621 Patent, cl. 1). The specification describes the effect—generating an "upwardly biasing force"—rather than a specific material property, which may support a functional definition of "flexible" (’621 Patent, col. 7:15-20).
  • Evidence for a Narrower Interpretation: The specification describes the deflection generating an upward force that "causes skirt bead surface 228A to more forcefully engage undercut surface 226A" (’621 Patent, col. 7:21-24). This interconnected mechanical action, tied to specific embodiments like Figure 2B, could be used to argue that "flexible top portion" is not just any part that bends, but one that is specifically designed to work as part of this larger sealing system.

• The Term: "protrusion"

• Context and Importance: This is the element on the closure that allegedly causes the deflection. Its definition is critical because if the accused closure lacks a structure that meets the definition of a "protrusion," infringement fails. Practitioners may focus on whether this requires a distinct, separate feature or if any downward-facing surface of the closure can qualify.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The term is not explicitly defined. Claim 1 of the '621 patent simply requires "a protrusion extending from the interior surface," which could be read broadly on various geometries.
  • Evidence for a Narrower Interpretation: The specification describes the protrusion as a "tang or projection" (’621 Patent, col. 7:4-6). Figures 2B and 2C show the protrusion (228C) as a relatively sharp, distinct feature extending downward from the top surface of the closure. A defendant could argue this specific geometry is required, rather than any contoured surface.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant had knowledge of the patents at least as of the April 9, 2018 correspondence (Compl. ¶37, ¶48). It further alleges specific intent is shown by Defendant’s actions of distributing the Accused Instrumentalities and providing "designs, instructions, materials and/or services" to its suppliers and partners, thereby encouraging their infringing acts (Compl. ¶38, ¶49).
• Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge from the April 2018 notice letter and allegations of "direct copying" of a competitor’s (Clorox’s) product that was marked with the ’621 patent number (Compl. ¶34, ¶45). The complaint further supports this by noting that after being notified, Defendant provided prior art references that the PTO subsequently found did not invalidate the asserted claims, suggesting Defendant continued to infringe despite knowing its invalidity position was questionable (Compl. ¶35, ¶46).

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

This dispute appears to center on the interpretation and application of very specific mechanical sealing concepts. The key questions for the court will likely be:

1. A core issue will be one of definitional scope: Can the term "flexible top portion", as described in the context of a specific deflection mechanism in the patent, be construed to read on the canister rim of the accused Lysol packaging? The outcome of this claim construction battle will likely be dispositive.

2. A key evidentiary question will be one of technical operation: Does the accused Lysol packaging actually function as claimed? The parties will likely present competing expert testimony and technical evidence (like the plaintiff’s CT scans) to argue whether the interaction between the Lysol lid and canister creates a seal via the patented deflection method or through a different, non-infringing mechanism.

3. A central theme will be one of culpability: Did the Defendant engage in "apparent copying" of a patent-marked product, as Plaintiff alleges, or was its design an independent development or a legitimate design-around? The pre-suit history, including the supplemental examination, will be highly relevant to the questions of willfulness and potential damages enhancement.