DCT

1:10-cv-00461

Pactiv LLC v. Multisorb Tech Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:10-cv-00461, N.D. Ill., 05/10/2010
  • Venue Allegations: Plaintiff alleges venue is proper based on Defendants' transaction of business and maintenance of offices within the Northern District of Illinois, and the commission of infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ modified atmosphere packaging systems and oxygen scavenger products for fresh meat infringe five of Plaintiff's patents.
  • Technical Context: The technology concerns dual-layer packaging systems that use an oxygen scavenger to create a low-oxygen environment, extending the shelf-life of perishable foods like raw meat, a significant commercial issue in the food distribution industry.
  • Key Procedural History: The complaint alleges that both defendants, through prior business relationships and confidentiality agreements with the plaintiff, gained access to proprietary information which they then used to develop the accused competing products. Notably, ex parte reexamination proceedings were initiated against all five patents-in-suit in 2010, the same year this complaint was filed. These proceedings ultimately resulted in the cancellation of all asserted claims of all five patents.

Case Timeline

Date Event
1995-09-05 Pactiv and Multisorb's predecessor enter Confidentiality Agreement
1996-04-03 Earliest Priority Date for '250, '142, '457, and '790 Patents
1997-07-01 Pactiv and Multisorb enter Supply Agreement
1997-12-16 U.S. Patent No. 5,698,250 Issues
1998-09-22 U.S. Patent No. 5,811,142 Issues
1998-10-08 Priority Date for '905 Patent
1999-08-11 Pactiv and MGCA enter Nondisclosure Agreement
1999-09-07 U.S. Patent No. 5,948,457 Issues
2000-07-31 Pactiv and MGCA enter Mutual Confidentiality Agreement
2001-02-06 U.S. Patent No. 6,183,790 Issues
2001-05-15 U.S. Patent No. 6,231,905 Issues
2008-10-28 Pactiv and MGCA enter Confidentiality Agreement
2010-05-10 First Amended Complaint Filed

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

U.S. Patent No. 5,698,250 - "Modified Atmosphere Package for Cut of Raw Meat," issued December 16, 1997.

The Invention Explained

  • Problem Addressed: The patent describes prior art modified atmosphere packaging systems as suffering from disadvantages, particularly the slow speed and potential for package damage associated with using evacuation techniques to remove oxygen ('250 Patent, col. 2:4-16).
  • The Patented Solution: The invention proposes a dual-container system. An inner container holding the food product, which is made of material "substantially permeable to oxygen," is placed inside an outer container made of material "substantially impermeable to oxygen." The outer container is then flushed with a desired gas mixture, and an oxygen scavenger is placed in the space between the two containers to absorb any residual oxygen. This process is designed to be faster and more efficient than traditional evacuation methods ('250 Patent, Abstract; col. 2:36-57).
  • Technical Importance: The invention offered a method to achieve a low-oxygen environment for preserving fresh meat at higher manufacturing speeds, a key factor in the high-volume food packaging industry ('250 Patent, col. 2:25-34).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims, but independent claim 1 is representative. During ex parte reexamination, all claims (1-24) of the '250 patent were canceled (U.S. 5,698,250 C1).
  • Essential elements of the canceled independent claim 1 include:
    • An inner container of a polymeric material substantially permeable to oxygen, configured to enclose a retail cut of raw meat.
    • An outer container of a polymeric material substantially impermeable to oxygen, enclosing the inner container.
    • The inner container being removable from the outer container without being destroyed.
    • The outer container being substantially free of oxygen after being flushed with one or more gases.
    • An oxygen scavenger, activated with an activating agent, positioned external to the inner container to absorb residual oxygen.

U.S. Patent No. 5,811,142 - "Modified Atmosphere Package for Cut of Raw Meat," issued September 22, 1998.

The Invention Explained

  • Problem Addressed: As a continuation-in-part of the '250 patent, this patent addresses the same problem of extending the shelf life of raw meats by creating a low-oxygen environment without the drawbacks of slow evacuation-based systems ('142 Patent, col. 1:40-52).
  • The Patented Solution: The technology is described as a "first package" (the inner container) with a "non-barrier portion" permeable to oxygen, which is covered by a "second package" (the outer container) that is impermeable to oxygen. This creates a "pocket" between the two packages where an activated oxygen scavenger is placed to absorb residual oxygen after the pocket is flushed with gas ('142 Patent, Abstract; col. 2:45-65).
  • Technical Importance: The invention aims to prevent discoloration and extend the storage life of chilled raw meats by rapidly reducing oxygen levels, thereby improving product appearance and value at the retail level ('142 Patent, col. 8:52-59).

Key Claims at a Glance

  • The complaint does not identify specific asserted claims, but independent claim 1 is representative. During ex parte reexamination, all claims (1-15) of the '142 patent were canceled (U.S. 5,811,142 C1).
  • Essential elements of the canceled independent claim 1 include:
    • A first package with a non-barrier portion substantially permeable to oxygen, sized to enclose a retail cut of raw meat.
    • A second package covering the first package, being substantially impermeable to oxygen.
    • The second package creates a pocket between it and the first package, with the pocket being substantially free of oxygen after gas flushing.
    • An oxygen scavenger positioned external to the first package to absorb residual oxygen within the pocket, which is activated with an oxygen uptake accelerator.

Multi-Patent Capsule: U.S. Patent No. 5,948,457

  • Patent Identification: 5,948,457, "Modified Atmosphere Package," issued September 7, 1999.
  • Technology Synopsis: This patent, a continuation of the '142 patent, describes a package with two compartments separated by a partition member that is permeable to oxygen. The entire assembly is enclosed by an outer wall that is impermeable to oxygen. An activated oxygen scavenger is placed in the first compartment (the "pocket") to absorb residual oxygen, while the retail cut of raw meat is in the second compartment ('457 Patent, Abstract; col. 2:25-50). All claims (1-17) were canceled during reexamination (U.S. 5,948,457 C1).
  • Asserted Claims: The complaint does not specify claims; independent claims 1, 10, 16, and 17 are included in the patent.
  • Accused Features: Defendants' modified atmosphere packaging systems and oxygen scavenger products (Compl. ¶¶30, 50, 75).

Multi-Patent Capsule: U.S. Patent No. 6,183,790

  • Patent Identification: 6,183,790, "Modified Atmosphere Package," issued February 6, 2001.
  • Technology Synopsis: A continuation of the '457 patent, this patent claims a package comprising first and second compartments separated by a permeable partition member. The system is designed for an oxygen scavenger to be placed in the first compartment to absorb oxygen, while a retail cut of meat resides in the second compartment, all within an impermeable outer wall ('790 Patent, Abstract). All claims (1-10) were canceled during reexamination (U.S. 6,183,790 C1).
  • Asserted Claims: The complaint does not specify claims; independent claims 1 and 10 are included in the patent.
  • Accused Features: Defendants' modified atmosphere packaging systems and oxygen scavenger products (Compl. ¶¶30, 50, 83).

Multi-Patent Capsule: U.S. Patent No. 6,231,905

  • Patent Identification: 6,231,905, "System and Method of Making a Modified Atmosphere Package Comprising an Activated Oxygen Scavenger for Packaging Meat," issued May 15, 2001.
  • Technology Synopsis: This patent claims a method of manufacturing a modified atmosphere package. The method involves reducing the oxygen in the pocket between the inner and outer packages to a first non-zero level using techniques like gas flushing, and then employing an activated oxygen scavenger to further reduce the oxygen level to approximately zero percent after the package is sealed. This two-stage oxygen reduction process is intended to increase manufacturing throughput ('905 Patent, Abstract; col. 2:54-61). All claims (1-22) were canceled during reexamination (U.S. 6,231,905 C1).
  • Asserted Claims: The complaint does not specify claims; independent claims 1, 10, and 14 are included in the patent.
  • Accused Features: The making, using, and selling of Defendants' modified atmosphere packaging systems (Compl. ¶¶28, 49, 91).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant Multisorb’s "Maplox SM Program for Case-Ready Meat," which utilizes its "FreshPax® CR" oxygen scavenger, and Defendant MGCA’s "AGELESS® product," an oxygen scavenger used in its modified atmosphere packaging system for red meat (Compl. ¶¶28-29, 49-50).

Functionality and Market Context

  • The complaint alleges these products and systems are used for preserving perishable foods, such as uncooked red meats, in low-oxygen environments to extend their shelf life (Compl. ¶¶19-22). The core of the accused functionality is the use of an oxygen scavenger packet within a meat package to reduce the oxygen level (Compl. ¶¶22, 29, 50). The complaint alleges that Defendants used confidential information obtained from Pactiv to enter the market and compete directly against Pactiv's patented systems (Compl. ¶¶34, 54).

IV. Analysis of Infringement Allegations

The complaint makes general allegations of infringement without providing a detailed mapping of specific product features to the elements of any asserted claim. The complaint does not contain or reference a claim chart exhibit. The infringement theory, as inferred from the complaint, is that the Defendants' systems for case-ready meat employ the same fundamental technology claimed in the Pactiv Patents: a dual-package structure where an oxygen scavenger is used to create a low-oxygen environment (Compl. ¶¶28, 49).

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Validity: The threshold and likely dispositive issue is the validity of the patents-in-suit. Given that all asserted claims across all five patents were canceled in ex parte reexaminations initiated in 2010, the question arises as to whether a viable infringement claim exists (U.S. 5,698,250 C1; U.S. 5,811,142 C1; U.S. 5,948,457 C1; U.S. 6,183,790 C1; U.S. 6,231,905 C1).
    • Technical Questions: Had the claims remained valid, a key technical question would have been whether the accused systems meet the specific structural and functional limitations of the claims. For example, for the '905 patent, a question would be whether the accused manufacturing method practices the two-step oxygen reduction process (to a non-zero level, then to zero) as claimed.

V. Key Claim Terms for Construction

While the cancellation of all asserted claims likely renders claim construction moot, the following terms would have been central to the dispute.

  • The Term: "substantially permeable to oxygen" ('250 Patent, claim 1)

    • Context and Importance: This term defines the required property of the inner container or package. The dispute would center on the degree of permeability required to meet the "substantially" threshold and what evidence is needed to prove it. Practitioners may focus on this term because the functionality of the entire system depends on oxygen moving from the inner package to the outer pocket where the scavenger is located.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The specification lists several exemplary materials, including "polystyrene foam, cellulose pulp, polyethylene, polypropylene, etc.," suggesting the term is not limited to a single material but covers a class of materials with the required functional property ('250 Patent, col. 3:25-28).
      • Evidence for a Narrower Interpretation: A defendant might argue the term should be limited by the specific embodiments described, such as the common polystyrene foam tray and PVC stretch film detailed in the preferred embodiment ('250 Patent, col. 3:28-41).

  • The Term: "positioned external to said inner container" ('250 Patent, claim 1) and "creating a pocket between said first package and said second package" ('142 Patent, claim 1)

    • Context and Importance: These phrases define the core spatial relationship between the food, the inner package, the outer package, and the oxygen scavenger. The infringement analysis would depend on whether the accused products create a distinct "pocket" that houses the scavenger "external" to the primary food container.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The general description in the summary of the invention describes the arrangement functionally, implying any configuration that achieves the external placement and creates a space for the scavenger would suffice ('250 Patent, col. 2:40-57).
      • Evidence for a Narrower Interpretation: The figures, which depict a sealed, overwrapped tray placed loosely inside a larger sealed bag (e.g., '250 Patent, FIG. 1, FIG. 2), could be used to argue for a more specific structural arrangement than what the broader claim language might otherwise suggest.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendants instruct their customers on how to use the accused systems in a manner that infringes the Pactiv Patents (Compl. ¶¶32, 52). It also alleges contributory infringement by asserting that the accused oxygen scavengers are material components of the infringing systems and have no substantial non-infringing use (Compl. ¶¶31, 51).
  • Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the Pactiv Patents (Compl. ¶¶59, 67). This knowledge is allegedly derived from prior business and contractual relationships, during which Pactiv provided Defendants with confidential and proprietary information about its modified atmosphere packaging systems (Compl. ¶¶27, 48).

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

  • A core issue for the court is one of case viability: given that all asserted claims across all five patents-in-suit were canceled during ex parte reexamination, can an action for patent infringement proceed without any valid and enforceable patent claims?
  • A second central question relates to the interplay of claims: to what extent can the non-patent claims for breach of contract and misappropriation of confidential information survive independently, particularly when the confidential information alleged to have been misused is deeply intertwined with the technology of the now-invalidated patents?