DCT

1:23-cv-11990

Contempo Card Co Inc v. Superior Bindery Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-11990, D. Mass., 08/29/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendants are Massachusetts corporations that are headquartered, conduct regular business, and allegedly committed the infringing acts within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ child-resistant storage containers infringe a patent related to packaging that uses a friction-fit mechanism and requires a tool for opening.
  • Technical Context: The technology relates to child-resistant packaging, a field with specific regulatory requirements, particularly within the expanding legal cannabis market where preventing accidental pediatric exposure is critical.
  • Key Procedural History: The complaint alleges that in December 2018, Defendant Superior expressed interest in licensing Plaintiff's "Vault Box™" technology after which discussions broke down. Plaintiff alleges it subsequently provided Defendant Superior with a formal notice of infringement, including a claim chart, on March 28, 2023, approximately five months before filing suit. These allegations may be used to support claims of willful infringement.

Case Timeline

Date Event
2018-03-09 '763 Patent Earliest Priority Date
2018-12-XX Pre-suit licensing/manufacturing discussions allegedly begin
2020-XX-XX Defendant Rev Clinics allegedly begins working with Defendant Superior
2022-06-14 '763 Patent Issue Date
2022-10-18 Defendant Superior's counsel allegedly represents manufacturing has ceased
2023-03-28 Plaintiff allegedly sends formal notice and infringement claim chart to Defendant Superior
2023-08-29 Complaint Filing Date

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

U.S. Patent No. 11,358,763 - "Child Resistant Storage Container"

The Invention Explained

  • Problem Addressed: The patent describes a need for improved child-resistant packaging, particularly for the cannabis industry. It notes that prior art solutions often rely on "locking means," such as flaps or plastic clips, which can break or tear, destroying the child-resistant capability, or are otherwise complicated to use (’763 Patent, col. 4:6-15).
  • The Patented Solution: The invention is a storage container composed of an inner box that slides into a slightly larger outer box (’763 Patent, Fig. 1). The two boxes are held together by friction, which is designed to be sufficient to prevent the inner box from being removed by shaking (’763 Patent, col. 2:55-62). The outer box features a narrow slot, and the inner box can only be extracted by inserting a thin object like a coin or key into the slot to push the inner box out (’763 Patent, col. 4:37-44). The slot is specified as being too narrow for a small child's finger to enter (’763 Patent, col. 4:41-44).
  • Technical Importance: This design offers a child-resistant solution that is inconspicuous, durable by avoiding breakable locking parts, and can be easily branded for commercial products (’763 Patent, col. 4:15-28).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and dependent claims 3, 4, 6, 9, 11, and 15 (Compl. ¶18).
  • Independent Claim 1 requires:
    • An outer box and an inner box.
    • "Sufficient friction" between the boxes to retain the inner box.
    • The outer box has five walls and an opening; the inner box has four vertical walls and a bottom.
    • The inner box is shorter than the outer box, such that it cannot be retrieved by reaching inside.
    • The means for accessing the inner box is "one or more slots" in the outer box, which are too small for a child's finger.
    • The slot-based access is "the only means" to extract the inner box.
  • The complaint generally alleges infringement of "one or more claims," preserving the right to assert other claims (Compl. ¶¶ 22-23).

III. The Accused Instrumentality

Product Identification

The accused products are "knock-off child resistant storage container[s]" (Compl. ¶18) and a "knock-off Vault Box™ design" (Compl. ¶16) made, used, and sold by Defendant Superior and used for packaging by Defendant Rev Clinics (Compl. ¶¶ 18-19). One product line is identified as "Cannibrands" (Compl. ¶20, Ex. F).

Functionality and Market Context

The complaint alleges the accused products are child-resistant containers used for packaging goods, including cannabis products (Compl. ¶¶ 10, 19). The complaint characterizes the products as "knock-off" versions of Plaintiff's own "Vault Box™" product, which allegedly embodies the patented invention (Compl. ¶¶ 15, 17). The complaint references visual evidence in the form of screenshots from Defendants' websites promoting the accused product (Compl. ¶18, Ex. B) and a catalog advertising the product for sale (Compl. ¶20, Ex. F). A screenshot from Defendant's website shows a rectangular box product being advertised (Compl. ¶18, Ex. B).

IV. Analysis of Infringement Allegations

The complaint alleges that Defendants' "knock-off child resistant storage container" infringes the ’763 Patent by "embodying the invention protected under the ’763 Patent" (Compl. ¶18). The pleading does not contain an element-by-element infringement analysis. Instead, it states that an infringement claim chart for claims 1, 3, 4, 6, 9, 11, and 15 was provided to Defendant Superior pre-suit, and this chart is referenced as Exhibit E to the complaint but not attached to the publicly filed document (Compl. ¶20). The infringement theory is therefore based on the general allegation that the accused containers are direct copies of Plaintiff's patented product and thus meet all limitations of the asserted claims (Compl. ¶¶ 15, 18, 22).

  • Identified Points of Contention:
    • Scope Questions: The patent claims require that the slot is "the only means" to extract the inner box (’763 Patent, col. 12:23-26). The litigation may focus on whether the accused product can be opened by other methods, such as by squeezing the outer box or through vigorous shaking, which could place it outside the literal scope of this limitation.
    • Technical Questions: A central factual question will be whether the accused product generates "sufficient friction" as required by claim 1 (’763 Patent, col. 12:11-13). This may require expert testing to determine the static and dynamic coefficients of friction of the materials used in the accused product and whether that friction is enough to "retain the inner box within the outer box" when shaken, as described in the patent specification (’763 Patent, col. 2:60-62).

V. Key Claim Terms for Construction

  • The Term: "sufficient friction"

  • Context and Importance: This term is at the heart of the invention's child-resistance mechanism and is not defined with a quantitative value. Its construction will be critical for determining the boundary between infringing and non-infringing levels of interaction between the inner and outer boxes.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification suggests a functional definition, stating the goal is to "create enough static friction to retain the inner box in the outer box even when shook" (’763 Patent, col. 2:60-62). Plaintiff may argue that any amount of friction that achieves this functional outcome is "sufficient."
    • Evidence for a Narrower Interpretation: The specification describes achieving this friction by using specific "high friction, rigid materials" or by affixing a "layer of foam" like "polyurethane charcoal foam" to the box walls (’763 Patent, col. 5:11-15, 5:39-44). A defendant may argue that "sufficient friction" should be construed to require these or structurally similar materials, rather than any incidental friction from a tight fit.

  • The Term: "the only means"

  • Context and Importance: This absolute language in claim 1 creates a clear potential non-infringement argument. Practitioners may focus on this term because if any other viable, non-destructive method of opening the accused product exists, there can be no literal infringement of this claim.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A party could argue "means" should be interpreted in the context of the problem solved—preventing access by a small child (’763 Patent, col. 4:41-44). Therefore, "only means" might be read as "the only means accessible to a small child," excluding methods requiring adult strength or tools not contemplated by the patent.
    • Evidence for a Narrower Interpretation: The plain language is categorical. A party could argue that if the box can be opened by squeezing its sides, by dropping it, or by any other physical manipulation, then the slot is factually not the "only means," regardless of the difficulty.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Defendant Superior's "product description... informs and instructs" customers on how to use the accused device in an infringing manner (Compl. ¶29). It also alleges contributory infringement, asserting the accused box is especially made for an infringing use and is not a staple article of commerce with substantial non-infringing uses (Compl. ¶¶ 36-37).
  • Willful Infringement: The complaint alleges willful infringement by Defendant Superior (Compl. ¶24). The allegations are factually supported by claims of pre-suit knowledge dating back to December 2018 licensing discussions (Compl. ¶13), awareness of Plaintiff’s "PATENT PENDING" markings on its commercial product (Compl. ¶15), and receipt of a formal notice letter with a claim chart on March 28, 2023 (Compl. ¶20).

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

  • A central evidentiary question will be one of technical identity: does the accused "knock-off" product, once examined in discovery, actually possess the specific structural and functional features required by claim 1, including a five-walled outer box, a four-walled inner box, and a length differential that prevents retrieval by reaching in?
  • A core issue will be one of functional performance: can the accused product be opened by means other than the tool slot, such as by force, shaking, or manipulation? The interpretation of the "only means" limitation will be dispositive for the literal infringement analysis.
  • A key question for damages will be one of intent: do the detailed allegations of pre-suit business discussions, knowledge of the "patent pending" status, and receipt of a notice letter provide sufficient evidence to prove that any infringement was willful, which would expose the defendant to a risk of enhanced damages?