1:19-cv-03944
Closure Systems Intl Inc v. Novembal USA Inc
I. Executive Summary and Procedural Information
- Case: Closure Systems International Inc. v. Novembal USA Inc.
- Parties & Counsel:
- Plaintiff: Closure Systems International Inc. (Delaware)
- Defendant: Novembal USA Inc. (Delaware)
- Plaintiff’s Counsel: Barnes & Thornburg LLP; Vedder Price P.C.
- Case Identification: 1:19-cv-03944, S.D. Ind., 09/17/2019
- Venue Allegations: Venue is alleged to be proper in the Southern District of Indiana because the designs claimed in the patents-in-suit were allegedly conceived of and developed in this district.
- Core Dispute: Plaintiff alleges that Defendant improperly filed for and obtained design patents on a bottle cap design that was invented years earlier by Plaintiff’s employees and seeks to have inventorship corrected.
- Technical Context: The dispute centers on the ornamental design of a plastic bottle cap, a high-volume component in the beverage packaging industry.
- Key Procedural History: The complaint states this action was precipitated by a cease-and-desist letter from Defendant to Plaintiff dated May 30, 2019, which alleged that Plaintiff's "New Closures" infringed one of the patents-in-suit. This case is a declaratory judgment action seeking correction of inventorship under 35 U.S.C. § 256.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-27 | CSI alleges its employees developed the "Option 2 CSI Closure" design. |
| 2011-03-09 | CSI alleges it e-mailed a presentation on the design to its customer, Nestle. |
| 2011-06-XX | CSI and Novembal representatives allegedly witnessed trials of each other's sample closures provided to Nestle. |
| 2018-01-04 | Priority date claimed by U.S. Design Patent Nos. D836,442 and D838,171. |
| 2018-08-17 | U.S. Design Patent No. D836,442 application filed. |
| 2018-12-25 | U.S. Design Patent No. D836,442 issues. |
| 2019-01-15 | U.S. Design Patent No. D838,171 issues. |
| 2019-05-30 | Novembal sends cease-and-desist letter to CSI regarding the '442 patent. |
| 2019-09-17 | Complaint for correction of inventorship filed by CSI. |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D836,442 - "CAP"
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance, not functional utility. The complaint alleges the design was created in response to a request from a customer, Nestle Waters, for a new bottle closure. (Compl. ¶10).
- The Patented Solution: The patent claims the ornamental design for a cap. The design, depicted in seven figures, is characterized by its overall shape and, most notably, a "wrap over knurl concept" consisting of a series of vertical ribs or flutes around the circumference of the cap's sidewall that curve inward at the top edge. (’442 Patent, Figs. 1-7). The claim itself is simply for "The ornamental design for a cap, as shown and described." (’442 Patent, Claim).
- Technical Importance: In the consumer products space, the ornamental design of packaging components like bottle caps can be a key product differentiator and brand signifier.
Key Claims at a Glance
- The single claim of the '442 patent is asserted. (Compl. ¶¶ 38, 40).
- The claim protects the ornamental design for the cap as a whole, as depicted in the patent's drawings. Key visual elements include:
- A generally cylindrical cap body.
- A circumferential pattern of vertical ribs on the cap's sidewall.
- The ribs curve inward toward the cap's top surface.
- A flat top surface with a circular feature.
U.S. Design Patent No. D838,171 - "CAP"
- Technology Synopsis: The '171 patent claims an ornamental design for a cap that appears visually identical to the design in the '442 patent. The complaint alleges this design is also identical to the "Option 2 CSI Closure" developed in 2011. (Compl. ¶26).
- Asserted Claims: The single design claim of the '171 patent is asserted. (Compl. ¶¶ 42, 44).
- Accused Features: The entirety of the patented design is alleged to have been derived from CSI's earlier invention. (Compl. ¶¶ 35, 42).
III. The Accused Instrumentality
This lawsuit does not follow a typical infringement posture where a product is accused of infringing a patent. Instead, the "instrumentalities" at the heart of the dispute are the patents-in-suit themselves. Plaintiff CSI alleges that Defendant Novembal improperly obtained the '442 and '171 patents by claiming inventorship of a design that was actually conceived by CSI employees. (Compl. ¶¶ 1-2).
The commercial product that brought the dispute to a head is identified as CSI's "New Closures," which CSI began supplying to Nestle in 2018. (Compl. ¶¶ 18-19). Novembal’s allegation that these "New Closures" infringed the '442 patent prompted CSI to file this suit seeking to be declared the rightful inventor of the patented design. (Compl. ¶22).
IV. Analysis of Derivation and Inventorship Allegations
The central allegation of the complaint is not infringement, but derivation—that Novembal took CSI's design and patented it. The complaint presents its evidence by comparing its own prior design with the patented design and contrasting it with evidence of Novembal's independent development.
The complaint includes a side-by-side visual comparison, alleging that a CSI drawing from 2011 is "identical" to the design shown in the '442 patent. (Compl. ¶25). This image juxtaposes CSI's "Option 2 CSI Closure" drawing with a figure from the '442 patent. (Compl. ¶25). A similar comparison is made for the '171 patent. (Compl. ¶26).
To counter Novembal's claim of independent invention, the complaint presents a technical drawing that Novembal allegedly produced as evidence of its "conception of the closure" from 2010. (Compl. ¶¶ 31, 33). The complaint alleges this drawing depicts a "completely different cap," pointing out that the knurl pattern does not extend to the top of the closure and that the drawing is entitled "recessed shoulder," unlike the patented "wrap over" design. (Compl. ¶¶ 33-34).
| Alleged Event / Evidence (CSI's Theory) | Description of Evidence from Complaint | Complaint Citation |
|---|---|---|
| CSI's Prior Conception (2011) | CSI employees developed the "Option 2 CSI Closure" design. The complaint includes a 2011 drawing alleged to be "identical" to the patented design. | ¶¶10, 25 |
| Novembal's Alleged Access (2011) | Representatives from Novembal allegedly "witnessed the trials of each others' closures and saw all of each others' sample closures" at a customer trial. | ¶16 |
| Novembal's Patent Filings (2018) | Novembal filed for patents on the design years after allegedly seeing CSI's version, naming its own employees as inventors. | ¶23 |
| Novembal's Alleged Conception Evidence (2010) | A cross-section drawing provided by Novembal is alleged to show a "completely different cap" with a "recessed shoulder," not the patented design. | ¶¶32-34 |
- Identified Points of Contention:
- Originality Question: Did Novembal's named inventors independently conceive of the design, or did they derive it from CSI's "Option 2 CSI Closure" to which they allegedly had access in 2011?
- Evidentiary Question: Can CSI provide clear and convincing evidence, including corroboration beyond the testimony of its own inventors, to prove both its prior conception of the design and Novembal's derivation of it?
- Technical Question: Does the 2010 "recessed shoulder" drawing provided by Novembal represent an early, distinct design, as CSI alleges, or could it be interpreted as an evolutionary step toward the final patented design?
V. Key Claim Terms for Construction
The complaint does not provide sufficient detail for analysis of claim construction. As this is a design patent inventorship dispute, the legal analysis focuses on who conceived of the overall ornamental appearance shown in the patent's figures, rather than the construction of specific text-based claim terms.
VI. Other Allegations
- Constructive Trust: In Count III, CSI alleges that the patents-in-suit were procured through "actual or constructive fraud with intent to deceive" and that they are "rightly the property of CSI." (Compl. ¶¶ 46-47). Based on these allegations, CSI asks the court to impose a constructive trust on the patents for CSI's benefit. (Compl. ¶48).
- Exceptional Case: The complaint does not plead willfulness in the context of infringement. However, in its prayer for relief, CSI seeks a declaration that the case is "exceptional under 35 U.S.C. § 285," which would allow for an award of attorneys' fees, based on the alleged circumstances of the patents' procurement. (Compl. Prayer for Relief ¶e).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case appears to depend on questions of fact and evidence rather than claim interpretation. The key questions for the court are:
- A core issue will be one of derivation and originality: can CSI prove, by clear and convincing evidence, that its employees conceived of the complete ornamental design first and, crucially, that the named Novembal inventors derived the design from CSI? Proving mere access to a similar design may not be sufficient without evidence of actual copying.
- A key evidentiary question will be one of corroboration: what documentary and testimonial evidence can CSI present to corroborate its claim of invention in 2011? The court will likely scrutinize the 2011 drawings, emails, and testimony regarding the 2011 Nestle trial.
- A dispositive factual question will be the interpretation of Novembal's development history: does the 2010 "recessed shoulder" drawing submitted by Novembal definitively show an unrelated design, as CSI contends, or can Novembal establish a credible, independent path of invention from that drawing to the final patented design?