1712308 Ontario Inc v. HMS Mfg Co

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: 1712308 Ontario Inc. o/a For the Ages, Inc. (Ontario, Canada)
  • Defendant: HMS Mfg. Co. (Michigan)
  • Plaintiff’s Counsel: Adler Pollock & Sheehan P.C.; Law Offices of John T. Hermann PC
• Case Identification: 2:17-cv-12392, E.D. Mich., 07/25/2017
• Venue Allegations: Venue is alleged to be proper because Defendant resides in the district, has committed alleged acts of infringement in the district, and maintains a regular and established place of business there.
• Core Dispute: Plaintiff alleges that Defendant’s storage tote and compression bag products infringe three patents related to a combined apparatus for storing compressible articles.
• Technical Context: The technology concerns consumer storage solutions that combine a flexible, vacuum-sealable bag with a soft-sided outer container to improve stackability, organization, and protection over standalone compression bags.
• Key Procedural History: The three patents-in-suit constitute a family; U.S. Patent No. 8,746,491 is a continuation of the application that issued as U.S. Patent No. 8,474,640, and U.S. Patent No. 9,226,558 is a continuation of the application that issued as the '491 patent. The complaint alleges that Plaintiff has complied with patent marking requirements for its own products.

Case Timeline

Date	Event
2009-12-31	Priority Date for '640, '491, and '558 Patents
2013-07-02	Issue Date of U.S. Patent No. 8,474,640
2014-06-10	Issue Date of U.S. Patent No. 8,746,491
2016-01-05	Issue Date of U.S. Patent No. 9,226,558
2017-07-25	Complaint Filing Date

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

U.S. Patent No. 8,474,640 - “Combined Apparatus for Storage,” issued July 2, 2013

The Invention Explained

• Problem Addressed: The patent’s background section identifies shortcomings with conventional compressive storage bags, noting that they do not compress into a flat shape, making them difficult to stack, and are made from pliable plastic film that can be punctured or lose its vacuum seal over time. (’640 Patent, col. 1:43-55).
• The Patented Solution: The invention combines an expandable, air-tight storage bag with a soft-sided container. After articles are placed in the bag and air is evacuated, the bag and its contents collapse within the container. The container provides a protective, "boxy" structure that facilitates stacking and contains the articles even if the bag's vacuum seal is compromised. (’640 Patent, Abstract; col. 2:35-41, col. 6:3-12).
• Technical Importance: The claimed invention sought to provide a more robust and organized storage solution by integrating the space-saving benefit of vacuum compression with the structural integrity and protection of a container. (’640 Patent, col. 1:56-61).

Key Claims at a Glance

• The complaint asserts independent Claim 1. (Compl. ¶19).
• Essential elements of Claim 1 include:
  • A combined apparatus for storing compressible articles, consisting of a combination of one or more expandable, air-tight storage bags and a soft-sided container, with the combination being "stackable."
  • The soft-sided container has four soft-sided walls, a top portion, and a bottom portion, and is capable of defining a "compact and low profile when in a fully collapsed state."
  • The container has a means for "repeatedly opening and closing" its opening.
  • The storage bag has a means for removing air and a means for creating an air-tight seal.
  • A functional limitation wherein evacuating air from the storage bag causes it and its contents to "collapse into said soft-sided container."

U.S. Patent No. 8,746,491 - “Apparatus for Storing Articles,” issued June 10, 2014

The Invention Explained

• Problem Addressed: The patent addresses the same problems as the parent ’640 Patent: the difficulty in stacking conventional compression bags, their susceptibility to punctures, and the potential for air to leak back in over time. (’491 Patent, col. 1:44-57).
• The Patented Solution: The invention is an apparatus comprising one or more vacuum-sealable storage bags and a container to hold them. The key operation involves evacuating air from the bag(s), causing them to collapse into the container, which provides structure and protection. (’491 Patent, Abstract; col. 2:30-35).
• Technical Importance: As a continuation, this patent refines and expands upon the core concept of combining a vacuum bag with an outer container to create a more durable, reliable, and space-efficient storage system. (’491 Patent, col. 1:58-62).

Key Claims at a Glance

• The complaint asserts independent Claims 1 and 8, as well as dependent Claim 9. (Compl. ¶29).
• Essential elements of independent Claim 1 include:
  • An apparatus with one or more "vacuum-sealable storage bags."
  • A "container configured for storing" the bags.
  • A functional step where evacuating air from the bags causes them to "collapse into the container."
• Essential elements of independent Claim 8 are more detailed, including:
  • One or more vacuum-sealable storage bags with a means for removing air and a means for an air-tight seal.
  • A container that defines a "compact and low profile when in a fully collapsed state."
  • A limitation that the bags and container are "configured for stacking."

U.S. Patent No. 9,226,558 - “Apparatus for Storing Articles,” issued January 5, 2016

• Patent Identification: U.S. Patent No. 9,226,558, "Apparatus for Storing Articles," issued January 5, 2016.
• Technology Synopsis: This patent, a continuation in the same family, describes a storage apparatus consisting of one or more vacuum-sealable bags and a container with "two or more soft walls." (’558 Patent, Claim 1). The invention addresses the problem of standalone vacuum bags being difficult to stack and prone to damage by providing a protective, structural container into which the bags collapse upon evacuation of air. (’558 Patent, col. 1:45-57, Abstract).
• Asserted Claims: The complaint asserts at least independent Claim 1. (Compl. ¶39).
• Accused Features: The "Hefty" branded "Shrink-Pak Combo" product, which includes a tote and compression bags, is alleged to embody the claimed apparatus. (Compl. ¶¶13-14, 39).

III. The Accused Instrumentality

Product Identification

The accused product is the "Hefty" branded "Shrink-Pak Combo," which is sold with "4-LG BAGS" and "1-JUMBO ZIPPER TOTE." (Compl. ¶14).

Functionality and Market Context

The complaint describes the accused product as a "competing tote with compression bag(s)" designed for storing articles. (Compl. ¶13). It is a consumer product offered for sale throughout the United States at retailers including Walmart, suggesting it competes in the same market as the Plaintiff's "SuperPack" and "StoreSmart" products. (Compl. ¶¶9, 14).

IV. Analysis of Infringement Allegations

The complaint references preliminary infringement analyses in Exhibits D, E, and F, but these exhibits were not filed with the complaint. Therefore, the infringement theory is summarized below in prose based on the complaint's narrative allegations.

'640 Patent Infringement Allegations

The complaint alleges that the "Hefty Shrink-Pak Combo" directly infringes at least Claim 1 of the ’640 patent. (Compl. ¶19). The infringement theory appears to be that the combination of the "1-JUMBO ZIPPER TOTE" (the "soft-sided container") and the included "4-LG BAGS" (the "air-tight storage bags") together meet all the limitations of the claimed "combined apparatus for storage." (Compl. ¶¶13-14, 19). The allegations suggest the product is stackable and that the bags collapse into the tote when air is evacuated, satisfying the key functional elements of the claim. (Compl. ¶13).

'491 Patent Infringement Allegations

The complaint alleges that the accused product directly infringes at least Claims 1, 8, and 9 of the ’491 patent. (Compl. ¶29). This suggests the Plaintiff's position is that the accused tote and bags constitute an "apparatus for storing articles" as recited in the independent claims. (Compl. ¶29). The infringement theory relies on the tote functioning as the claimed "container" and the included bags as the "vacuum-sealable storage bags" which are configured to collapse into the container upon air removal. (Compl. ¶¶13-14, 29).

Identified Points of Contention

• Scope Questions: A central issue may be whether the accused "JUMBO ZIPPER TOTE" meets the definition of a "soft-sided container" that defines a "compact and low profile when in a fully collapsed state," as required by claims in the '640 and '491 patents. The degree of collapsibility of the accused tote compared to the patent's descriptions and figures (e.g., '640 Patent, Fig. 5) will likely be a point of dispute.
• Technical Questions: Claim 1 of the ’640 patent uses the transitional phrase "consisting of," which is presumed to be closed to unrecited elements. An issue may arise as to whether the accused product includes additional structural or functional components beyond those recited in the claim, which could potentially place it outside the claim's scope.

V. Key Claim Terms for Construction

The Term: "soft-sided container"

• Context and Importance: This term is fundamental to the scope of all three asserted patents. The definition will determine whether the accused "JUMBO ZIPPER TOTE" can be considered an infringing structure. Practitioners may focus on this term because its construction will likely be dispositive of infringement.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification states the container is "made of soft, flexible or bending materials" and lists examples like "polyethylene material or woven nylon." (’640 Patent, col. 2:27-29; col. 4:22-24). This language could support a broad construction that encompasses any container not made of rigid material.
  • Evidence for a Narrower Interpretation: The claims require the container to define a "compact and low profile when in a fully collapsed state." (’640 Patent, col. 6:38-40). Figure 5 depicts the container as almost completely flat. A party could argue this requires a high degree of collapsibility, potentially narrowing the term to exclude semi-rigid totes.

The Term: "stackable"

• Context and Importance: This term, appearing in claims of the '640 and '491 patents, describes a key purported advantage of the invention. The dispute may turn on the degree of stability required to be "stackable."
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The specification describes the configuration as "stacking, similar to a box," which could be interpreted as a general capability rather than a specific technical standard. (’640 Patent, col. 3:47-48).
  • Evidence for a Narrower Interpretation: The patent notes that because the apparatus is "boxy in overall dimension and profile, it is easier for the combined storage apparatus to be stored or stacked." (’640 Patent, col. 6:1-3). This could support a narrower construction requiring a specific, retained box-like shape and stability that the accused product may or may not possess when in use.

VI. Other Allegations

Indirect Infringement

The complaint alleges that HMS induces infringement by its "distributors, retailers, resellers, customers, users, and/or licensees." (Compl. ¶¶21, 31, 41). The complaint does not plead specific facts supporting intent, such as citations to user manuals or advertising that instruct users to perform the infringing combination.

Willful Infringement

While the complaint does not use the term "willful," it requests a declaration that the case is "exceptional" and an award of "treble damages" under 35 U.S.C. § 285. (Compl. p. 9, ¶D). The basis for this appears to be the allegation that "HMS has received actual and constructive notice of at least the '640 patent." (Compl. ¶15).

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

• A core issue will be one of definitional scope: can the term "soft-sided container," which the patents describe as having a "compact and low profile when in a fully collapsed state," be construed to cover the specific material and structural characteristics of the accused "Hefty" brand tote?
• A key evidentiary question will be one of functional correspondence: does the accused product, in actual use, achieve the "stackable" quality claimed in the patents, and does the accused bag "collapse into" the accused tote in the manner recited by the claims?
• A critical legal question for the ’640 patent will be the interpretation of the closed-ended "consisting of" language in Claim 1, which will require determining whether the accused product includes any unrecited elements that would place it outside the claim's literal scope.