DCT
1:18-cv-00553
Nissei ASB Co v. R&D Tool & Engineering Co
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nissei ASB Co. (Georgia) and Nissei ASB Machine, Co., Ltd. (Japan)
- Defendant: R&D Tool & Engineering Co. (Missouri)
- Plaintiff’s Counsel: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Case Identification: [Nissei ASB Co.](https://ai-lab.exparte.com/party/nissei-asb-co) v. [R&D Tool & Engineering Co.](https://ai-lab.exparte.com/party/r-and-d-tool-and-engineering-co), 1:18-cv-00553, N.D. Ga., 02/05/2018
- Venue Allegations: Plaintiff alleges Defendant consented to personal jurisdiction and venue in Atlanta, Georgia, through forum selection clauses in two prior contractual agreements.
- Core Dispute: Plaintiff alleges that Defendant’s manufacture and sale of molds for use in Plaintiff’s proprietary blow molding machines infringes three patents and breaches a prior one-time license agreement between the parties.
- Technical Context: The technology relates to industrial blow molding machines used for high-volume manufacturing of plastic containers, with the patents focused on the design and functionality of the mold units themselves.
- Key Procedural History: The complaint alleges the dispute arises from a prior business relationship where Plaintiff granted Defendant a one-time, paid license to manufacture a single mold unit for a specific third-party customer. Plaintiff alleges Defendant subsequently manufactured and sold additional, unlicensed molds, forming the basis for both the breach of contract and willful patent infringement claims.
Case Timeline
| Date | Event |
|---|---|
| 2009-09-11 | ’614 Patent Priority Date |
| 2010-01-29 | ’466 and ’602 Patent Priority Date |
| 2012-05-11 | Plaintiff receives purchase order from third-party customer PPI |
| 2012-07-02 | Plaintiff and Defendant execute Confidentiality Agreement for one mold |
| 2013-02-22 | Plaintiff and Defendant execute Royalty Agreement for one mold |
| 2013-03-08 | Defendant makes $30,000 license payment to Plaintiff |
| 2013-12-17 | U.S. Patent 8,608,466 Issues |
| 2013-12-24 | U.S. Patent 8,613,614 Issues |
| 2015-04-07 | U.S. Patent 8,998,602 Issues |
| 2018-02-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,608,466 - "Blow Mold Unit and Blow Molding Apparatus Using the Same"
- Patent Identification: U.S. Patent No. 8,608,466, "Blow Mold Unit and Blow Molding Apparatus Using the Same," issued December 17, 2013.
The Invention Explained
- Problem Addressed: The patent’s background describes the difficulty in handling the constituent parts of a blow mold—specifically the main cavity molds and a separate "raised-bottom" mold—as a single, integrated unit during attachment or removal from a blow molding apparatus. This separate handling results in poor "attachment/removal workability" (US 8,608,466 B2, col. 1:60-64).
- The Patented Solution: The invention proposes an integrated "blow mold unit" where the first and second blow cavity molds and the raised-bottom molds are structurally unified. This is achieved through a system of securing members, including a "third securing member" that holds the raised-bottom molds and is disposed between the first and second securing members holding the main cavity molds, allowing the entire assembly to be handled as one piece (US 8,608,466 B2, Abstract; col. 2:33-58).
- Technical Importance: This integrated design simplifies maintenance and mold changeovers in high-volume industrial manufacturing, where reducing machine downtime is critical (US 8,608,466 B2, col. 1:60-64).
Key Claims at a Glance
- The complaint asserts independent claims 1, 10, 11, 12, 13, 14, and 15, with Claim 1 identified as representative (Compl. ¶31).
- Independent Claim 1 requires:
- A blow mold comprising a first blow cavity split mold, a second blow cavity split mold, and a plurality of raised-bottom molds.
- A first securing member for the first blow cavity split mold.
- A second securing member for the second blow cavity split mold.
- A plurality of first pressure-receiving members secured on the first and second securing members.
- A third securing member disposed between the first and second, with the raised-bottom molds secured on its first side.
- A plurality of shafts suspended from a second side of the third securing member.
- A plurality of second pressure-receiving members secured on the first and second securing members below the third securing member.
U.S. Patent No. 8,998,602 - "Blow Mold Unit and Blow Molding Apparatus Using the Same"
- Patent Identification: U.S. Patent No. 8,998,602, "Blow Mold Unit and Blow Molding Apparatus Using the Same," issued April 7, 2015.
The Invention Explained
- Problem Addressed: Similar to its parent '466 Patent, this patent addresses the complexity and poor workability associated with attaching and removing multi-part blow molds from the base of a molding apparatus (US 8,998,602 B2, col. 1:60-64).
- The Patented Solution: The invention provides a mechanism to facilitate the installation and positioning of the mold unit on the machine base. The solution includes two "securing blocks" that are fixed to the base and feature a "roller" and a "roller driving member." The driving member can move the roller downward from a disengaged position into rolling contact with the base, which may allow for easier sliding and alignment of the heavy mold unit during installation or removal (US 8,998,602 B2, Abstract; col. 6:26-32).
- Technical Importance: This feature directly addresses the workability problem by simplifying the physical process of installing, removing, and securing heavy mold units, which can reduce labor and machine downtime (US 8,998,602 B2, col. 2:1-4).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶34).
- Independent Claim 1 requires:
- A blow mold unit comprising a blow mold with first and second blow cavity split molds.
- Two securing blocks that are secured on the base.
- Each securing block includes a roller that comes in rolling contact with the base.
- Each securing block further includes a roller driving member that moves the roller downward from an upward (non-contact) position to a downward (contact) position.
U.S. Patent No. 8,613,614 - "Blow Molding Apparatus"
- Patent Identification: U.S. Patent No. 8,613,614, "Blow Molding Apparatus," issued December 24, 2013.
Technology Synopsis
- This patent addresses the problem of mechanical flex in the holding plates that carry neck molds through the manufacturing process in multi-row configurations. The invention claims a "supporting-mechanism" that includes at least one "reinforcement shaft" running through the holding plates to provide structural rigidity, ensuring the plates remain parallel to achieve uniform clamping and consistent molding quality (US 8,613,614 B2, Abstract; col. 9:18-25).
Asserted Claims
- Independent claims 1 and 6 (Compl. ¶37).
Accused Features
- The complaint alleges the accused molds include a supporting mechanism with reinforcing shafts, securing sections, guide shafts, and biasing members for holding plates that carry neck molds (Compl. ¶71).
III. The Accused Instrumentality
Product Identification
- Molds manufactured, used, and sold by Defendant R&D for use in Plaintiff's ASB-150DPW injection blow molding machines (Compl. ¶4, ¶44).
Functionality and Market Context
- The accused products are mold units specifically designed to operate within Plaintiff's ASB-150DPW machines to form plastic containers such as bottles and jars (Compl. ¶4, ¶49). The complaint alleges that after being granted a one-time license to produce a single mold for a third-party customer, Defendant proceeded to manufacture and sell "additional molds" beyond the scope of that license, suggesting a market for third-party or aftermarket molds for Plaintiff's machines (Compl. ¶40, ¶53). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
8,608,466 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a blow mold that includes a first blow cavity split mold, a second blow cavity split mold, and a plurality of raised-bottom molds... | a first cavity of the mold, a second cavity of the mold, and a plurality of raised-bottom molds, which can be closed to form the shape of a bottle with a raised-bottom | ¶45a | col. 2:35-42 |
| a first securing member on which the first blow cavity split mold is secured | a first plate securing the first cavity of the mold | ¶45b | col. 2:42-44 |
| a second securing member on which the second blow cavity split mold is secured | a second plate securing the second cavity of the mold | ¶45c | col. 2:45-47 |
| a third securing member that is disposed between the first securing member and the second securing member, the plurality of raised-bottom molds being secured on a first side of the third securing member | a third plate supporting the raised-bottom molds located between the first and second plates securing the first and second cavities of the mold | ¶45e | col. 2:53-56 |
| a plurality of shafts that are suspended from a second side of the third securing member...a lower end of each of the plurality of shafts being a free end | a plurality of shafts hanging from the bottom of the third plate with the lower end of the shafts being free | ¶45f | col. 2:57-60 |
| a plurality of second pressure-receiving members that are secured on the first securing member and the second securing member at a position below the third securing member | a plurality of sets of members attached to the first and second plates securing the first and second cavities of the mold and located below the third plate | ¶45g | col. 2:61-64 |
8,998,602 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a blow mold that includes a first blow cavity split mold, a second blow cavity split mold, and the first blow cavity split mold and the second blow cavity split mold being closed... | a first cavity of the mold, a second cavity of the mold, and a plurality of raised-bottom molds, which can be closed to form the shape of a bottle with a raised-bottom | ¶58a | col. 5:10-17 |
| two securing blocks that are secured on the base | two securing blocks at the bottom of the mold | ¶58b | col. 5:18-19 |
| each of the two securing blocks including a roller that comes in rolling contact with the base, and a roller driving member that moves the roller downward from an upward position...to a downward position... | the securing blocks include wheels and a mechanism that raises and lowers the wheels to allow the mold to roll on the wheels | ¶58c | col. 5:20-26 |
Identified Points of Contention
- Scope Questions: The infringement allegations for the ’466 Patent map the claim term "securing member" to the accused product's "plate" (Compl. ¶45b, ¶45c, ¶45e). A potential dispute may arise over whether the term "securing member," in the context of the patent, requires a more specific structure than a simple "plate."
- Technical Questions: For the ’602 Patent, Claim 1 requires a "roller driving member that moves the roller downward from an upward position." The complaint alleges a "mechanism that raises and lowers the wheels" (Compl. ¶58c). This raises the evidentiary question of whether the accused mechanism performs the specific "downward" motion from a disengaged "upward" position as claimed, or if its mode of operation is technically different.
V. Key Claim Terms for Construction
- The Term: "securing member" (’466 Patent, Claim 1)
- Context and Importance: This term appears three times in Claim 1 ("first," "second," and "third securing member") and forms the structural backbone of the claimed integrated mold unit. The definition will be critical, as the complaint maps these elements to "plates" in the accused device (Compl. ¶45). Practitioners may focus on this term to determine if it is simply a generic term for a structural plate or if it implies a more specific functional or structural role based on the patent's disclosure.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The detailed description of the ’466 Patent repeatedly refers to these elements as "securing plates" (e.g., "first securing plate 310," "second securing plate 312"), suggesting the terms "member" and "plate" were used interchangeably by the inventor and supporting a construction where a "plate" meets the limitation (US 8,608,466 B2, col. 16:1-3).
- Evidence for a Narrower Interpretation: The specification describes the securing members in the context of their interaction with other components, such as "pressure-receiving plates" (US 8,608,466 B2, col. 16:7-14). A party could argue that to qualify as a "securing member," a structure must not only be a plate but must also be configured to secure these specific associated components as shown in the patent's embodiments.
VI. Other Allegations
- Indirect Infringement: The complaint pleads inducement and contributory infringement in the alternative should Defendant deny direct infringement (Compl. ¶49, ¶51, ¶62, ¶64). Inducement is alleged based on Defendant selling the molds with knowledge of the patents and intending for its customers to infringe by using them in ASB machines (Compl. ¶49). Contributory infringement is alleged on the basis that the molds are a material component of the patented invention, are not staple articles of commerce, and have no substantial non-infringing uses (Compl. ¶51-52).
- Willful Infringement: The willfulness allegations are based on Defendant's alleged knowledge of Plaintiff's intellectual property rights stemming directly from their prior contractual relationship (Compl. ¶53, ¶66, ¶79). The complaint alleges that the parties executed agreements, including a Royalty Agreement, that granted Defendant a one-time license for a single mold, thereby putting Defendant on notice of Plaintiff's patent rights (Compl. ¶25). The complaint further alleges that Plaintiff directly informed Defendant of its "continued infringement" prior to the lawsuit (Compl. ¶47, ¶60, ¶73).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of willfulness rooted in prior conduct: The case appears to be heavily influenced by the pre-existing contractual relationship where Defendant was explicitly granted a one-time license under Plaintiff's "intellectual property rights." The primary question for the court may not be the technical nuances of infringement, but whether Defendant’s alleged decision to manufacture and sell additional molds beyond this single licensed unit constitutes egregious and willful infringement, potentially justifying enhanced damages.
- A key technical question will be one of functional specificity: While the complaint provides a high-level mapping of accused features to claim elements, the case may turn on whether the accused molds meet the specific functional requirements of the claims. For instance, regarding the ’602 patent, does the accused product's general "mechanism that raises and lowers the wheels" operate in the specific manner required by Claim 1, which recites a "roller driving member that moves the roller downward from an upward position"? The evidence on the precise operation of the accused device will be dispositive.