DCT
1:22-cv-05028
Zip Top Inc v. SC Johnson & Son Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zip Top Inc (Delaware)
- Defendant: SC Johnson & Son Inc (Wisconsin)
- Plaintiff’s Counsel: Slayden Grubert Beard PLLC; Stamos & Trucco LLP
- Case Identification: 1:22-cv-05028, N.D. Ill., 10/31/2022
- Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant maintains an established place of business within the district and conducts substantial business there, including selling the accused products to Illinois residents via its website.
- Core Dispute: Plaintiff alleges that Defendant’s Ziploc ENDURABLES line of silicone containers infringes patents related to flexible, self-standing foodstuff containers with integrated zipper-style closures.
- Technical Context: The technology resides in the consumer housewares market for reusable food storage, specifically focusing on silicone containers that combine the stability of rigid bowls with the sealing functionality of flexible bags.
- Key Procedural History: This action was initiated by an original complaint filed on September 15, 2022. The currently operative pleading is the Amended Complaint. Plaintiff’s willfulness allegations are based on Defendant’s alleged knowledge of the patents-in-suit as of the filing of the original complaint.
Case Timeline
| Date | Event |
|---|---|
| 2017-03-02 | Earliest Priority Date for '755 and '890 Patents |
| 2018-03-10 | Plaintiff Zip Top presents its container line at a trade show |
| 2022-06-14 | U.S. Patent No. 11,358,755 Issues |
| 2022-07-12 | U.S. Patent No. 11,383,890 Issues |
| 2022-09-15 | Original Complaint Filed |
| 2022-10-31 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 11,358,755 - "Flexible Foodstuff Container with Closure," issued June 14, 2022
The Invention Explained
- Problem Addressed: The patent background describes a market with various food containers but notes the limitations of existing options, such as silicone bags that are not self-standing or rigid containers that are less versatile (’755 Patent, col. 1:15-2:54).
- The Patented Solution: The invention is a single-piece, sealable silicone container designed to resolve these issues. It features a base and lower sides with sufficient thickness and rigidity to allow the container to stand freely on a surface, combined with a more flexible upper portion and mouth that incorporates an integrated zipper-style seal (’755 Patent, Abstract; col. 3:1-4:5). A key aspect of the design is that when unsealed, the mouth is configured to "automatically assume an open configuration" with an "eye-shape," making it easy to fill without being held open by a user (’755 Patent, col. 9:45-53).
- Technical Importance: The technology aims to provide a single product that combines the stability and accessibility of a rigid bowl with the reusability and integrated sealing of a flexible storage bag, all within a unitary silicone construction (’755 Patent, col. 2:55-col. 3:4).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶37, 39).
- Essential elements of independent claim 1 include:
- A base and sides made of sufficiently rigid material for the container to "freely stand vertically on its base."
- A mouth with a first and second tip at opposite ends.
- A seal comprising first and second zipper members.
- A configuration where the mouth and seal "automatically assume an open configuration when the container freely stands vertically," which comprises an "eye-shape."
- A flexible mouth and zipper members that are deformable between open and closed configurations.
- Ends of the zipper members that are "angled at about 45 degrees" to seal the mouth at the tips when engaged.
U.S. Patent No. 11,383,890 - "Silicone Molding Process for Making a Container with Zipper Members Tapered at a Flexible Spout," issued July 12, 2022
The Invention Explained
- Problem Addressed: The patent addresses the manufacturing challenge of creating a complex, one-piece silicone container that includes functional, integrated features like a pour spout and a zipper seal with varying geometry (’890 Patent, Title; col. 5:2-20).
- The Patented Solution: The patent claims a specific process for manufacturing the container. The method involves molding a "unitary whole container" from silicone, where the zipper members are engineered to taper in height and change form as they approach the "flexible spout" at each end of the mouth (’890 Patent, Abstract; col. 9:36-54). This tapering allows for a secure seal along the main length of the mouth while facilitating easy pouring from the spouts.
- Technical Importance: This manufacturing process enables the creation of a sophisticated, single-piece container with integrated features, which can avoid the costs, complexity, and potential points of failure associated with assembling multiple separate components (’890 Patent, col. 4:45-59).
Key Claims at a Glance
- The complaint asserts independent claim 1 and reserves the right to assert others (Compl. ¶46, 49).
- Essential elements of independent claim 1 (a method claim) include:
- A series of process steps: placing molds, mixing and putting uncured silicone into the mold cavity, curing with heat and pressure, and removing the final container.
- The resulting product is a "unitary whole container."
- The container has at least one "flexible spout."
- The container includes a zipper portion with male and female members that have distinct "middle" sections and "end" sections.
- A key structural limitation on the zipper is that the "middle trunk extends farther from the... interior side of the mouth than the end trunk," signifying the tapering feature.
III. The Accused Instrumentality
Product Identification
- Defendant’s "Ziploc ENDURABLES" containers (Compl. ¶32).
Functionality and Market Context
- The complaint describes the accused products as silicone containers for storing foodstuffs, suitable for use from "Freezer, To Oven, To Table" (Compl. ¶32; p. 8).
- A side-by-side photograph shows the Ziploc ENDURABLES product in its retail packaging and an unpackaged container with its mouth open (Compl. p. 8). The images depict a container that appears to be self-standing with a flat base and a zipper-style closure at the top.
- Plaintiff alleges it was "first to market" with this type of product and that Defendant’s entry into the market with an allegedly "inferior design" is harming its brand equity and market share (Compl. ¶34-35).
IV. Analysis of Infringement Allegations
'755 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a base ... and at least a portion of the plurality of sides adjacent the base are of sufficient thickness and rigidity to enable the container to freely stand vertically on its base | The Ziploc ENDURABLES containers are depicted in complaint visuals as freestanding on a flat surface. | ¶37; p. 8 | col. 9:16-20 |
| a mouth defined by the sides opposite the base, the mouth comprising: a first tip formed by the sides at a first end of the mouth, a second tip formed by the sides at a second end of the mouth | The accused product's open top is shown with distinct corners or tips at either end of the opening. | ¶37; p. 8 | col. 9:22-26 |
| a seal of the mouth comprising: a first zipper member ... a second zipper member | The accused product is shown to have an integrated zipper-style closure mechanism at its mouth. | ¶37; p. 8 | col. 9:30-39 |
| wherein the mouth and seal are configured to automatically assume an open configuration when the container freely stands vertically ... the open configuration comprising an eye-shape with the first and second tips at opposite ends | The complaint includes a photograph showing the accused product standing with its mouth open in a shape that could be characterized as an "eye-shape." | ¶37; p. 8 | col. 9:45-53 |
- Identified Points of Contention:
- Scope Questions: A central question may be the construction of the term "automatically assume an open configuration." The dispute may turn on whether the accused product actively moves to an open state or simply remains stable once manually opened.
- Technical Questions: Claim 1 requires the ends of the zipper members to be "angled at about 45 degrees" to seal the mouth "at the tips." The complaint does not provide detailed visual or technical evidence of the accused product's zipper geometry at the corners, which may become a key point of dispute requiring expert analysis and discovery.
'890 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| curing the uncured silicone ... to form the unitary whole container | Plaintiff alleges that the accused products are unitary silicone containers made by an infringing process. | ¶46-47 | col. 11:23-26 |
| a container portion defining a mouth, wherein the mouth has at least one flexible spout | The complaint's images depict the accused product having corners that could function as pour spouts. | ¶47; p. 8 | col. 11:27-30 |
| a zipper portion comprising: a female zipper member ... and a male zipper member ... wherein the middle trunk extends farther from the second interior side of the mouth than the end trunk | The complaint alleges infringement of the process claim, which implies the accused products are made with the claimed tapered zipper structure, but does not provide details on Defendant's manufacturing process. | ¶47 | col. 11:31-57 |
| removing the container from the mold cavity. | Plaintiff's allegation of infringement under 35 U.S.C. § 271(g) is based on the importation of accused products allegedly made by the full patented process. | ¶47 | col. 11:61-62 |
- Identified Points of Contention:
- Evidentiary Questions: As this is a process patent asserted against an imported product (§ 271(g)), the primary hurdle for the plaintiff will be evidentiary. The case will likely depend on whether discovery reveals that Defendant’s manufacturing process includes every step of claim 1, including the specific geometric tapering of the zipper components as they approach the spouts.
- Technical Questions: The claim requires a specific structural relationship where the "middle trunk extends farther" than the "end trunk." Proving infringement will require a detailed technical comparison between the internal structure of the accused product's zipper and this claim limitation.
V. Key Claim Terms for Construction
The Term: "automatically assume an open configuration" (’755 Patent, Claim 1)
- Context and Importance: This functional language is central to the '755 patent's infringement theory. Practitioners may focus on this term because its definition will determine whether a product that simply stays open when placed in that position infringes, or if a more active "springing open" action is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification emphasizes the user benefit of the container remaining open for "free standing" pouring or spooning of contents, suggesting the key feature is stability in the open state, not the transition to it (’755 Patent, col. 4:39-46).
- Evidence for a Narrower Interpretation: The use of the word "automatically" could be argued to imply that the container, by its design, actively moves toward or defaults to the "eye-shape" from a more closed position without continuous user manipulation.
The Term: "unitary whole container" (’890 Patent, Claim 1)
- Context and Importance: The construction of this term is critical for the process claim in the '890 patent. The dispute will center on whether this term permits manufacturing techniques like overmolding, where separate components are integrated during the molding process, or if it requires a truly monolithic, single-shot molding.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification explicitly describes an embodiment where zipper members are "separately molded and then placed inside the container mold" to be "overmolded" or "encapsulated," thereby becoming "a unitary whole with the container." (’890 Patent, col. 4:49-59). This language strongly suggests "unitary whole" refers to the final, inseparable state of the product, not the molding method.
- Evidence for a Narrower Interpretation: A defendant might argue that the primary claim language should be read to mean formed from a single, undifferentiated mass of silicone, and that the overmolding description represents a distinct, alternative embodiment not covered by every claim.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by advertising and distributing the Accused Instrumentalities and providing instructional materials that encourage infringing use by customers (Compl. ¶40, 50). Contributory infringement is alleged on the basis that the accused products are a material component specially made for infringement and are not a staple article of commerce (Compl. ¶42, 52).
- Willful Infringement: The complaint alleges willful infringement based on Defendant's continued infringement after being made aware of the patents-in-suit by, at the latest, the filing and service of the original complaint on September 15, 2022 (Compl. ¶38, 48).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue for the '755 patent will be one of functional scope: Does the Ziploc ENDURABLES container’s ability to remain open for filling meet the claim requirement to "automatically assume an open configuration," or does that term require a specific, active motion that the accused product does not perform?
- A key evidentiary question for the '890 patent will be one of process replication: Can the plaintiff, through discovery, produce evidence that Defendant’s (or its supplier's) manufacturing process for the imported containers practices every step of the patented method, especially the specific claim limitations detailing how the zipper components must taper and change form near the flexible spouts?