DCT

1:19-cv-11193

Plastipak Packaging Inc v. Ice River Springs Water Co Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-11193, D. Mass., 05/28/2019
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Massachusetts because Defendants transact business in the district, sell the accused products to retailers in the district, and operate a "regular and established place of business" via a manufacturing and bottling facility in Pittsfield, Massachusetts.
  • Core Dispute: Plaintiff alleges that Defendant’s plastic water bottles and the preforms used to make them infringe ten patents related to "light-weighting" technology, which reduces the amount of plastic in a container’s neck finish.
  • Technical Context: The technology concerns the design of plastic preforms and blow-molded containers, specifically the neck portion, to reduce material usage and weight while maintaining structural integrity for capping and handling.
  • Key Procedural History: Plaintiff alleges it sent a letter to Defendant on April 12, 2019, which included the asserted patents and a claim chart, putting Defendant on notice of the alleged infringement. The complaint alleges that Defendant did not provide a substantive response, which forms the basis for the willfulness allegations.

Case Timeline

Date Event
2006-03-06 Earliest Patent Priority Date Alleged
2008-Fall Production allegedly began at Defendant's Massachusetts facility
2014-10-14 U.S. Patent No. 8,857,637 Issues
2015-05-19 U.S. Patent No. 9,033,168 Issues
2015-09-22 U.S. Patent No. 9,139,326 Issues
2016-08-02 U.S. Patent No. 9,403,310 Issues
2016-12-20 U.S. Patent No. 9,522,759 Issues
2017-08-22 U.S. Patent No. 9,738,409 Issues
2017-12-26 U.S. Patent No. 9,850,019 Issues
2018-07-17 U.S. Patent No. 10,023,345 Issues
2019-02-26 U.S. Patent No. 10,214,312 Issues
2019-04-12 Plaintiff sends notice letter to Defendant
2019-04-23 U.S. Patent No. 10,266,299 Issues
2019-05-28 Complaint Filed

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

U.S. Patent No. 8,857,637 - "Lightweight Plastic Container and Preform"

  • Issued: October 14, 2014 (’637 Patent)

The Invention Explained

  • Problem Addressed: The patent addresses the economic and efficiency desire to produce stable plastic containers and preforms with a reduced weight, thereby using less material (U.S. 8,857,637, col. 1:20-24).
  • The Patented Solution: The invention is a method of making a plastic container using a preform with specific, reduced vertical dimensions in its neck portion. This "lightweight neck finish" retains essential features like threads, a tamper-evident formation, and a support flange for handling, but within a smaller vertical space, which reduces the overall plastic required (U.S. 8,857,637, col. 2:10-21, Fig. 5).
  • Technical Importance: This "light-weighting" approach reduces raw material consumption, cost, and energy usage in the high-volume beverage container industry (Compl. ¶¶26-29).

Key Claims at a Glance

  • The complaint asserts independent method claim 29 (Compl. ¶65).
  • Claim 29 requires the steps of:
    • providing a preform with a dispensing opening, a tamper-evident formation, a support flange with a lower surface, and a lower portion below the flange
    • wherein a specific "vertical distance from the dispensing opening to the lower surface of the support flange...is 0.580 inches or less"
    • and "forming a container"
  • The complaint also asserts dependent claims 30 and 32-34 (Compl. ¶65).

U.S. Patent No. 9,033,168 - "Lightweight Plastic Container and Preform"

  • Issued: May 19, 2015 (’168 Patent)

The Invention Explained

  • Problem Addressed: The patent addresses the same technical problem as the ’637 Patent: the need for lighter plastic containers that remain stable and functional (U.S. 9,033,168, col. 1:20-24).
  • The Patented Solution: The patent claims the container apparatus itself, rather than the method of making it. The solution is a blow-molded container with a hollow body and a neck portion having a support flange, threads, and a tamper-evident formation, where the vertical height of these neck features is constrained to "0.580 inches or less" for a container of at least 500 ml (U.S. 9,033,168, col. 6:23-38). This design lowers the container's center of gravity, which may improve stability during manufacturing and handling (U.S. 9,033,168, col. 2:48-56).
  • Technical Importance: By claiming the final container product, the patent covers the article of commerce sold to consumers, complementing method claims that cover the manufacturing process (Compl. ¶4).

Key Claims at a Glance

  • The complaint asserts independent apparatus claim 1 (Compl. ¶76).
  • Claim 1 requires:
    • a plastic blow molded container with a hollow body and a neck portion
    • the neck portion including a support flange, threads, a tamper-evident formation, and a dispensing opening
    • wherein the container volume is at least 500 ml
    • and the "vertical distance from the top of the dispensing opening to the lower surface of the support flange...is 0.580 inches or less"
  • The complaint also asserts dependent claims 2, 4-5, 7-8, 11-13, 16-17, 22-23, and 26-30 (Compl. ¶76).

U.S. Patent No. 9,139,326 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 9,139,326, "Lightweight Plastic Container and Preform", issued September 22, 2015 (’326 Patent).
  • Technology Synopsis: This patent claims a plastic container with a specific arrangement of features on the neck, including "multiple-lead threads" positioned above a tamper-evident formation, which is in turn above a support flange. It imposes specific weight and dimensional constraints, such as the neck portion weighing 2.3 grams or less (U.S. 9,139,326, col. 5:58-6:11).
  • Asserted Claims: Independent claim 1 (Compl. ¶95).
  • Accused Features: The complaint alleges the Accused Products are plastic blow-molded containers having the claimed arrangement of multiple-lead threads, tamper-evident formation, and support flange, and meeting the specific weight and height limitations (Compl. ¶¶96-98).

U.S. Patent No. 9,403,310 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 9,403,310, "Lightweight Plastic Container and Preform", issued August 2, 2016 (’310 Patent).
  • Technology Synopsis: This patent claims the plastic preform used to make a lightweight container. The claims recite a specific sequence of neck features (dispensing opening, threads, tamper-evident formation, support flange) and impose dimensional and weight limitations on the preform itself, such as a neck portion weight of 2.3 grams or less (U.S. 9,403,310, col. 5:48-6:4).
  • Asserted Claims: Independent claim 1 (Compl. ¶119).
  • Accused Features: The complaint alleges that the preforms used to make the Accused Products have the claimed sequence of neck features and meet the specified weight and dimensional constraints (Compl. ¶¶120-122).

U.S. Patent No. 9,522,759 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 9,522,759, "Lightweight Plastic Container and Preform", issued December 20, 2016 (’759 Patent).
  • Technology Synopsis: This patent claims a plastic container with a focus on overall product weight and stability. It recites limitations on the combined weight of the container's neck, sidewall, and base portions (11 grams or less) and on the ratio of the center of gravity to the container height (less than 0.57) (U.S. 9,522,759, col. 6:3-12, col. 8:1-4).
  • Asserted Claims: Independent claims 1 and 30 (Compl. ¶140).
  • Accused Features: The Accused Products are alleged to meet the claimed structural arrangement as well as the limitations on total container weight and center of gravity ratio (Compl. ¶¶141, 147, 149).

U.S. Patent No. 9,738,409 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 9,738,409, "Lightweight Plastic Container and Preform", issued August 22, 2017 (’409 Patent).
  • Technology Synopsis: This patent claims a "container assembly" comprising both the plastic container and a closure configured to receive the threads. The claims focus on the combination and include specific weight and dimensional limitations for the container's neck portion, such as a weight of 2.3 grams or less (U.S. 9,738,409, col. 6:1-14).
  • Asserted Claims: Independent claims 1 and 15 (Compl. ¶158).
  • Accused Features: The complaint alleges the Accused Products, including their caps, form an assembly that meets the claimed structural and dimensional limitations (Compl. ¶¶159-162).

U.S. Patent No. 9,850,019 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 9,850,019, "Lightweight Plastic Container and Preform", issued December 26, 2017 (’019 Patent).
  • Technology Synopsis: This patent claims a plastic preform with specific weight and dimensional limitations. It recites constraints on the neck portion weight (2.3 grams or less), the combined weight of the preform (11 grams or less), and the ratio of the center of gravity to the container height (less than 0.57) (U.S. 9,850,019, col. 5:47-6:2, col. 8:13-16).
  • Asserted Claims: Independent claims 1 and 28 (Compl. ¶177).
  • Accused Features: The preforms used to make the Accused Products are alleged to meet the structural, weight, and center-of-gravity limitations recited in the claims (Compl. ¶¶178-179, 184, 186).

U.S. Patent No. 10,023,345 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 10,023,345, "Lightweight Plastic Container and Preform", issued July 17, 2018 (’345 Patent).
  • Technology Synopsis: This patent claims a container assembly (container and closure) filled with a beverage. It recites a vertical distance from the dispensing opening to the lower surface of the support flange of 0.580 inches or less and an outside diameter of the support flange between 22 mm and 39.2 mm (U.S. 10,023,345, col. 8:20-33).
  • Asserted Claims: Independent claim 28 (Compl. ¶195).
  • Accused Features: The Accused Products, as filled with water and capped, are alleged to constitute the claimed assembly and meet the recited dimensional limitations (Compl. ¶¶196-201).

U.S. Patent No. 10,214,312 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 10,214,312, "Lightweight Plastic Container and Preform", issued February 26, 2019 (’312 Patent).
  • Technology Synopsis: This patent claims a container assembly that combines various dimensional and weight limitations seen in prior family members. It requires a neck portion weight of 2.3 grams or less, a total container weight of 10 grams or less, and a vertical distance from the dispensing opening to the support flange of 0.500 inches or less (U.S. 10,214,312, col. 6:12-23, col. 5:58-6:2).
  • Asserted Claims: Independent claims 1 and 17 (Compl. ¶208).
  • Accused Features: The complaint alleges the Accused Products and their caps meet this combination of structural, weight, and dimensional limitations (Compl. ¶¶209, 212, 214, 220).

U.S. Patent No. 10,266,299 - "Lightweight Plastic Container and Preform"

  • Patent Identification: U.S. Patent No. 10,266,299, "Lightweight Plastic Container and Preform", issued April 23, 2019 (’299 Patent).
  • Technology Synopsis: This patent claims a plastic preform with a specific combination of weight and dimensional features. It recites a neck portion weight of 2.3 grams or less, a vertical distance from opening to flange of 0.500 inches or less, and a combined preform weight of 10 grams or less (U.S. 10,266,299, col. 6:11-20, col. 5:48-51).
  • Asserted Claims: Independent claims 1, 19, 28, and 29 (Compl. ¶229).
  • Accused Features: The preforms for the Accused Products are alleged to have the claimed structure and meet the combined weight and dimensional limitations (Compl. ¶¶230, 232, 233, 239).

III. The Accused Instrumentality

Product Identification

  • The Accused Products are store brand, private label, and Ice River Springs-brand bottled water products, specifically including 16.9 oz (500 ml) bottles, and the plastic preforms used to manufacture them (Compl. ¶43). The complaint includes a photograph showing examples of "Ice River" and "Tim Hortons" branded bottles (Compl. ¶44, p. 12).

Functionality and Market Context

  • The Accused Products are plastic bottles for beverages, manufactured via a blow-molding process from PET preforms (Compl. ¶¶15, 48). The complaint alleges that Defendant advertises the benefits of this lightweight design, stating on its website that its 500ml bottle is one of the lightest in the industry and that the bottle and cap combination weighs less than 10 grams (Compl. ¶49). The products are sold to general retailers and grocery store chains throughout the United States (Compl. ¶13).

IV. Analysis of Infringement Allegations

’637 Patent Infringement Allegations

Claim Element (from Independent Claim 29) Alleged Infringing Functionality Complaint Citation Patent Citation
providing a preform having a dispensing opening, a tamper-evident formation, a support flange with a lower surface, and a lower portion below the support flange; Defendant manufactures its bottles using preforms that have a neck finish with a dispensing opening, a tamper-evident formation, and a support flange (Compl. ¶45). A photograph displays the alleged neck finish structure of an accused product (Compl. ¶45, p. 12). ¶¶43, 45, 66 col. 4:26-30
wherein the vertical distance from the dispensing opening to the lower surface of the support flange, including threads and the tamper-evident formation, is 0.580 inches or less... The complaint alleges this vertical distance for the accused preforms and products is "approximately 0.455 inches." ¶¶46, 66 col. 4:32-38
...and the lower portion has an initial axial length; The complaint alleges on information and belief that the lower portion of the preform is stretched three times during blow molding. ¶66 col. 4:38-40
and forming a container. Defendant manufactures the accused 16.9 oz bottled water products by blow-molding the preforms. ¶¶43, 68 col. 4:41

’168 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a plastic blow molded container, comprising: a hollow body portion including a lower supporting base portion; a sidewall portion...and a neck portion... The Accused Products are plastic blow-molded containers with a base, sidewall, and neck portion. ¶¶77, 43 col. 2:5-13
the neck portion including a support flange having an upper and lower surface and threads; a tamper-evident formation having a lower surface; and a dispensing opening at the top of the neck portion... The neck portion of the Accused Products allegedly has a support flange, threads, and a tamper-evident formation. ¶77 col. 2:14-19
wherein the volume of the container is at least 500 ml... The accused bottles are identified as 16.9 oz (500 ml) products. ¶43 col. 6:32
...and the vertical distance from the top of the dispensing opening to the lower surface of the support flange, including the threads and the tamper-evident formation, is 0.580 inches or less. The complaint alleges this vertical distance for the Accused Products is "less than 0.500 inches," citing an approximate measurement of 0.455 inches. ¶¶79, 46 col. 6:34-38

Identified Points of Contention

  • Scope Questions: The claims in this patent family frequently recite specific dimensional and weight limitations (e.g., "0.580 inches or less," "2.3 grams or less"). A central question will be whether Defendant's products, when measured according to standard industry practices, fall within these claimed ranges. The complaint's use of "approximately" for its measurements (Compl. ¶¶46, 47) may suggest a potential dispute over measurement precision and infringement.
  • Technical Questions: A key evidentiary question will be one of structural correspondence. The court will need to determine if the physical features on the accused bottles, as shown in the complaint's photograph (Compl. ¶45, p. 12), constitute a "support flange" and a "tamper-evident formation" as those terms are understood in the context of the patents' specifications.

V. Key Claim Terms for Construction

  • The Term: "support flange"
  • Context and Importance: This structure is recited in nearly every independent claim across the asserted patents and is a critical element of the claimed lightweight neck finish. Its definition is central to the infringement analysis, as it serves as a primary reference point for many of the claimed dimensional limitations (e.g., the vertical distance from the opening to the flange's lower surface). Practitioners may focus on this term because its precise boundaries define the measurement framework for infringement.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the "Support flange 18 is generally provided to facilitate the handling of containers, during formation and thereafter" (’168 Patent, col. 2:11-13). This functional description could support a construction that encompasses any flange-like structure on the neck used for handling, regardless of its specific shape.
    • Evidence for a Narrower Interpretation: Figure 5 of the patents provides a detailed cross-section of the neck, showing the support flange (18) as a distinct, outwardly-projecting feature with a defined upper surface (20) and lower surface (22). This specific embodiment could be cited to argue for a narrower construction that requires a structure closely matching the depicted geometry.

VI. Other Allegations

Indirect Infringement

  • The complaint alleges inducement of infringement for several patents, stating that to the extent Defendant has others manufacture the Accused Products, it has induced that infringement after learning of the patents (Compl. ¶¶70, 89, 113). For patents covering the final container, inducement is also alleged based on selling the products to customers with packaging intended to promote resale and use (Compl. ¶¶89, 113).

Willful Infringement

  • Willfulness is alleged for all asserted patents. The primary basis is Defendant’s alleged knowledge of the patents since at least its receipt of Plaintiff's April 12, 2019, letter, which allegedly included the patents and claim charts (Compl. ¶¶61, 72, 91). The complaint asserts that Defendant's continued infringement after receiving this notice constitutes willful misconduct (Compl. ¶73).

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

This dispute appears to center on straightforward questions of direct infringement for a large family of patents covering a single technology area. The case will likely turn on the following key questions for the court:

  • A core issue will be one of "metrology and measurement": Do the physical dimensions and weights of the accused preforms and containers, particularly the features of their neck finishes, fall within the specific numerical ranges recited in the asserted claims (e.g., a vertical height of "0.580 inches or less" and a weight of "2.3 grams or less")? The resolution will likely depend on expert testimony regarding proper measurement techniques.
  • A related evidentiary question is one of "structural identity": Do the features identified on the accused products, such as the annular rings on the neck, perform the functions and possess the structures of a "support flange" and "tamper-evident formation" as those terms are defined and depicted within the intrinsic evidence of the patents-in-suit?