Inline Plastics Corp v. Lacerta Group Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Inline Plastics Corp. (Connecticut)
  • Defendant: Lacerta Group Inc (Massachusetts)
  • Plaintiff’s Counsel: McCarter & English LLP
• Case Identification: 1:18-cv-11631, D. Mass., 05/17/2019
• Venue Allegations: Venue is based on Defendant's residence and incorporation in Massachusetts, where it maintains a regular and established place of business and has allegedly committed acts of infringement.
• Core Dispute: Plaintiff alleges that Defendant’s "FRESH N' SEALED" line of thermoformed plastic containers, and the methods used to make them, infringe five patents related to tamper-resistant and tamper-evident packaging technology.
• Technical Context: The technology addresses the market for clear, re-closeable food containers that provide consumers with a conspicuous, single-use visual indication if the package has been opened prior to purchase.
• Key Procedural History: The complaint alleges that Defendant had actual knowledge of at least two of the asserted patents (’003 and ’680) because it cited the patents or their published applications during the prosecution of its own separate patent application, a fact which may be relevant to the willfulness allegations.

Case Timeline

Date	Event
2003-07-21	Earliest Priority Date for '003, '680, ’756, ’580, ’640 Patents
2006-07-11	U.S. Patent No. 7,073,680 Issues
2006-10-10	U.S. Patent No. 7,118,003 Issues
2014-08-05	U.S. Patent No. 8,795,580 Issues
2016-12-27	U.S. Patent No. 9,527,640 Issues
2017-04-25	U.S. Patent No. 9,630,756 Issues
2019-05-17	Amended Complaint Filed

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

U.S. Patent No. 7,118,003 - "Tamper Resistant Container with Tamper-Evident Feature and Method of Forming the Same"

The Invention Explained

• Problem Addressed: The patent describes a need for containers that are both re-closeable for consumer convenience and also incorporate features that deter unauthorized tampering and clearly indicate if tampering has occurred, thereby instilling consumer confidence in the product's integrity (’003 Patent, col. 2:4-14).
• The Patented Solution: The invention is a container system, typically a clear plastic clamshell, where the base has an "upwardly projecting bead" around its perimeter. When the lid is closed, this bead shields the lid's edge, making it "relatively inaccessible" to being pried open (’003 Patent, Abstract; col. 2:23-28). To open the container, the user must first break a "frangible section" of the hinge, which provides a clear visual indication of opening and creates a projection that can be used as a lever to separate the lid from the base (’003 Patent, col. 2:30-39). The complaint includes Figure 16 from the patent, a perspective view showing the container with its hinge and tamper-evident tear strip (Compl. p. 7).
• Technical Importance: The design integrates a secure, tamper-resistant locking mechanism with a visually obvious, irreversible tamper-evident feature, while still allowing the container to be easily re-closed and reused by the legitimate purchaser (’003 Patent, col. 2:4-9).

Key Claims at a Glance

• The complaint asserts infringement of one or more claims, exemplifying its allegations with Claim 1 (Compl. ¶35, 37).
• Independent Claim 1 is a product claim requiring:
  • a plastic, transparent cover portion including an outwardly extending peripheral flange
  • a base portion including an upper peripheral edge forming an upwardly projecting bead extending substantially about the perimeter
  • the bead is configured to render the flange relatively inaccessible when closed
  • a tamper evident bridge connecting the cover portion to the base portion
• The complaint reserves the right to assert additional claims (Compl. ¶35).

U.S. Patent No. 7,073,680 - "Tamper-Resistant Container With Tamper-Evident Feature and Method of Forming The Same"

The Invention Explained

• Problem Addressed: As with the related ’003 Patent, this patent addresses the dual needs in the packaging industry for consumer-friendly, re-closeable containers and reliable features that deter and indicate tampering (’680 Patent, col. 2:5-14).
• The Patented Solution: The patent describes a container with a cover and base, where the base's upper edge has an upwardly projecting bead that shields the cover's flange when closed, making it difficult to access (’680 Patent, Abstract). A hinge joins the two parts and includes a "frangible section" or tear strip. Severing this strip creates a projection extending "out beyond the upwardly projecting bead," which facilitates prying the lid open and serves as evidence of tampering (’680 Patent, col. 2:35-45). This mechanism is illustrated in various figures within the patent, such as Figure 11, which depicts the removal of the frangible section (’680 Patent, Fig. 11).
• Technical Importance: This technology provides a unified solution for product security and consumer convenience in the context of thermoformed plastic packaging, particularly for perishable foods (’680 Patent, col. 1:19-27).

Key Claims at a Glance

• The complaint asserts infringement of one or more claims, exemplifying its allegations with Claim 1 (Compl. ¶35, 43).
• Independent Claim 1 is a product claim requiring:
  • a cover portion with an outwardly extending peripheral flange
  • a base portion with an upper peripheral edge forming an upwardly projecting bead
  • the bead is configured to render the flange relatively inaccessible when closed
  • the cover and base lock together via a circumferential engagement sealing interface with arcuate segments
  • a lock for maintaining the flange and edge adjacent when closed
• The complaint reserves the right to assert additional claims (Compl. ¶35).

U.S. Patent No. 9,630,756 - "Tamper-Resistant And Tamper Evident Containers"

• Technology Synopsis: This patent, from the same family, claims a plastic container with a base and cover joined by a hinge. The tamper-evident system relies on a frangible section in the hinge that must be severed to open the container, creating a projection that aids in lid removal and serves as proof of opening (’756 Patent, Abstract).
• Asserted Claims: The complaint exemplifies infringement with independent Claim 1 (Compl. ¶35, 49).
• Accused Features: The physical structure of the "FRESH N' SEALED" containers is accused of infringing (Compl. ¶49).

U.S. Patent No. 8,795,580 - "Methods of Manufacturing Tamper-Resistant and Tamper Evident Containers"

• Technology Synopsis: This patent claims the methods of manufacturing the tamper-evident containers. The claims focus on the thermoforming process steps, including forming the cover, base, hinge, and a frangible portion with at least one line of weakness from a single sheet of plastic material (’580 Patent, Abstract; col. 11:1-29).
• Asserted Claims: The complaint exemplifies infringement with independent Claim 1 (Compl. ¶35, 55).
• Accused Features: The methods used by Lacerta to manufacture its "FRESH N' SEALED" containers are accused of infringing (Compl. ¶55).

U.S. Patent No. 9,527,640 - "Methods of manufacturing Tamper-Resistant and Tamper Evident Containers"

• Technology Synopsis: This patent, related to the ’580 Patent, also claims methods of manufacturing the containers. It details the steps of thermoforming the components, including the cover flange, the base with its skirt, the hinge, and the line of weakness, from a single sheet of material (’640 Patent, Abstract).
• Asserted Claims: The complaint exemplifies infringement with independent Claim 1 (Compl. ¶35, 61).
• Accused Features: The methods used by Lacerta to manufacture its "FRESH N' SEALED" containers are accused of infringing (Compl. ¶61).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendant Lacerta’s plastic, tamper-resistant/tamper-evident containers sold under the “FRESH N’ SEALED” brand, including product numbers TE-RT-64, TE-RT-120, TE-RT-16, TE-RPF-9, and TE-WR-SM (Compl. ¶33). The methods used to manufacture these products are also accused (Compl. ¶55, 61).

Functionality and Market Context

The complaint alleges that the accused products are clear plastic containers that compete directly with Plaintiff's patented SAFE-T-FRESH® containers (Compl. ¶33). The complaint alleges that a distinguishing feature of the patented technology, and by extension the accused products, is a "frangible hinge which can be in the form or a tear strip that must be at least partially severed or removed to facilitate opening the lid," which also serves as a "visual indication of tampering" (Compl. ¶32). To support its infringement allegations, the complaint provides a side-by-side photographic comparison of the Plaintiff's container and the Defendant's allegedly infringing container (Compl. p. 8).

IV. Analysis of Infringement Allegations

The complaint references, but does not attach, claim charts that allegedly detail infringement of Claim 1 of each of the five patents-in-suit (Compl. ¶35). The complaint's narrative theory of infringement alleges that the accused "FRESH N' SEALED" products possess the same essential configuration and features as the patented containers, specifically a tamper-evident mechanism involving a frangible tear strip that must be severed to open the container (Compl. ¶32, 35). This severing is alleged to provide a visual indication of tampering, a core element of the patented inventions (Compl. ¶32).

The infringement allegations against the product patents ('003, '680, '756) are directed at the physical structure of the accused containers (Compl. ¶37, 43, 49). The infringement allegations against the method patents ('580, '640) are directed at the processes Lacerta uses to manufacture the accused containers (Compl. ¶55, 61).

Identified Points of Contention

• Scope Questions: A central dispute may concern the scope of key claim terms. For the product claims, this could involve whether the accused container's rim structure meets the limitations of an "upwardly projecting bead configured to render the...flange relatively inaccessible." For the method claims, a question may be whether Lacerta's manufacturing process includes all of the specific forming steps recited in the claims.
• Technical Questions: The case will likely require a detailed technical comparison between the patented features and the accused products. A key question of fact will be whether the structure and operation of the accused container's tear-strip mechanism is the same as or equivalent to the "frangible section" that "upon severing, provides a projection" for lid removal, as required by claims in the '003 and '680 patents.

V. Key Claim Terms for Construction

"upwardly projecting bead ... configured to render the outwardly extending flange of the cover portion relatively inaccessible" ('680 Patent, Claim 1)

• Context and Importance: This term is the foundation of the "tamper-resistant" aspect of the invention. The degree of "inaccessibility" required by the claim will be a critical determinant of infringement. Practitioners may focus on this term because its interpretation will define how significant a physical barrier the accused product must possess to fall within the claim scope.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: Parties arguing for a broader scope may point to the general description, which states the goal is to "hinder the relatively easy method of removing a cover from conventional containers" and "physically blocks access" to the flange edge, suggesting the effect is more important than a specific geometry (’680 Patent, col. 6:38-44).
  • Evidence for a Narrower Interpretation: Parties arguing for a narrower scope may cite specific figures, like Figure 10, which illustrates a distinct physical wall that extends above and surrounds the cover flange, suggesting a specific and substantial barrier is required (’680 Patent, Fig. 10).

"frangible section, which upon severing, provides a projection that extends out beyond the upwardly projecting bead" ('680 Patent, Claim 2)

• Context and Importance: This term captures the dual "tamper-evident" and "ease-of-opening" functions of the invention. The dispute will likely center on whether the remnants of the tear strip on the accused product constitute a "projection" with the functional characteristics described in the patent.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: A broader reading might argue that any piece of the hinge remaining after the tear strip is removed qualifies as a "projection," regardless of its specific shape or utility.
  • Evidence for a Narrower Interpretation: The specification describes how the remaining arms are used to "leverage" and "facilitate removal" of the cover (’680 Patent, col. 7:12-16). A narrower construction might require the "projection" to be specifically shaped or positioned to provide this mechanical advantage, not just be a remnant piece of plastic.

VI. Other Allegations

Indirect Infringement

The complaint focuses on direct infringement under 35 U.S.C. § 271, alleging that Defendant itself manufactures, uses, and sells the infringing products and uses the infringing methods (Compl. ¶37, 55, 61). The complaint does not appear to plead specific facts to support claims for either induced or contributory infringement.

Willful Infringement

The complaint alleges that infringement has been and continues to be "willful, wanton, and deliberate" for all five patents (Compl. ¶40, 46, 52, 58, 64). The alleged bases for willfulness include constructive notice through Plaintiff's marking of its products with the patent numbers (e.g., Compl. ¶11) and alleged actual pre-suit knowledge of the '003 and '680 patents, based on Defendant having cited them during the prosecution of its own patent application (Compl. ¶38, 44).

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

1. Structural and Methodological Equivalence: A primary issue will be factual: does the accused "FRESH N' SEALED" container's physical design—specifically its rim, lid flange, and tear-strip mechanism—contain structures that are the same as or equivalent to those recited in the asserted product claims? Similarly, does Lacerta's manufacturing process perform all the steps recited in the asserted method claims?
2. Definitional Scope: The outcome will likely depend on claim construction. A central question for the court will be one of definitional scope: how "inaccessible" must the lid flange be to satisfy the "relatively inaccessible" limitation, and what specific structural and functional characteristics must a post-severing remnant possess to be considered a "projection" under the patents' claims?
3. Willfulness and Knowledge: Should infringement be found, a key question will be whether it was willful. The allegation that Defendant cited the plaintiff’s patents during its own prosecution effort (Compl. ¶38, 44) raises a significant question of fact regarding pre-suit knowledge, which will be central to the determination of willfulness and potential enhanced damages.