DCT
0:19-cv-02804
Nova Packaging LLC v. Hamer Fischbein LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NOVA PACKAGING, LLC, d/b/a NOVA AUTOMATION (Colorado)
- Defendant: HAMER-FISCHBEIN, LLC (Delaware)
- Plaintiff’s Counsel: Greene Espel PLLP
- Case Identification: 0:19-cv-02804, D. Minn., 10/29/2019
- Venue Allegations: Venue is alleged to be proper in the District of Minnesota because the defendant, HAMER-FISCHBEIN, LLC, resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s automated palletizing stack box infringes a patent related to an apparatus and method for stacking items on a pallet using adjustable walls.
- Technical Context: The technology addresses the industrial packaging challenge of automatically stacking non-rigid items, like bags, onto pallets in a stable and space-efficient manner.
- Key Procedural History: The complaint alleges that Plaintiff sent a demand letter to Defendant on September 30, 2019, approximately one month before filing suit, putting Defendant on notice of the patent and the alleged infringement.
Case Timeline
| Date | Event |
|---|---|
| 2017-04-26 | '199 Patent Priority Date |
| 2019-08-27 | '199 Patent Issue Date |
| 2019-09-13 | Date of Plaintiff's visit to Defendant's website |
| 2019-09-30 | Plaintiff sends Demand Letter to Defendant |
| 2019-10-29 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,392,199 - "Pallet Auto Box," issued August 27, 2019
The Invention Explained
- Problem Addressed: The patent's background section describes the difficulty of automatically stacking non-square items like bags, which can become lopsided. Conventional solutions like fixed-box pallets are noted to be expensive or require cumbersome post-loading steps like lifting the entire pallet out of the box (ʼ199 Patent, col. 1:12-23).
- The Patented Solution: The invention is an automated boxing system with adjustable walls that surround a pallet during loading. The walls can raise incrementally as the stack of items grows higher, maintaining a stable border. Once the pallet is fully loaded, the walls pull away and a gate opens, allowing the completed pallet to be moved out on a conveyor and a new, empty pallet to be moved in (ʼ199 Patent, Abstract; col. 2:13-21). The process is illustrated in figures such as FIG. 1A, which shows a robot arm loading a bag into the auto box, and FIG. 2E, which shows the walls tilting away from the completed stack.
- Technical Importance: This technology aims to fully automate the palletizing process for non-rigid items, creating a "perfect" pallet with an even perimeter, thereby improving downstream supply chain efficiency (ʼ199 Patent, col. 2:22-25).
Key Claims at a Glance
- The complaint asserts three independent claims: 1 (apparatus), 12 (system), and 16 (method) (Compl. ¶¶12-14).
- Independent Claim 1 (Apparatus):
- a gate
- a first plurality of walls forming four sides of a box
- at least one wall that raises and lowers adjacent a loading area, raising to a first level and then a second level to receive more items
- the at least one wall is raised to maintain a border around the loading area
- the first plurality of walls pull away from the loading area after loading
- the gate opens after the pallet is loaded so it can be moved out
- Independent Claim 12 (System):
- a conveyor to move a pallet
- a robot arm for loading bags
- an auto box with four walls that raise during loading to maintain a border
- the four walls pull away from the pallet after loading
- at least one wall opens as a gate after loading
- Independent Claim 16 (Method):
- positioning a pallet on a loading area
- raising at least one wall as items are stacked to maintain a border, adjusting for height as the stack grows
- pulling the plurality of walls away after loading
- opening a door or gate so the loaded pallet can be moved out
III. The Accused Instrumentality
Product Identification
The Hamer Mulch Stack Box, along with accessories such as robot palletizers (Compl. ¶15).
Functionality and Market Context
The complaint alleges the Hamer Mulch Stack Box is an automated system for palletizing. It is described as having multiple walls that form a box around a pallet, with at least one wall functioning as a gate (Compl. ¶16). The complaint includes an annotated image of the accused product identifying a telescoping structure and a piston that allegedly enable the walls to raise and lower to different levels (Compl. ¶17, p.7). The product is also alleged to be offered with options including a robot palletizer (Compl. ¶20).
IV. Analysis of Infringement Allegations
'199 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a gate; and | The complaint alleges that one of the walls of the Hamer Mulch Stack Box includes a gate. | ¶16 | col. 3:7-13 |
| a first plurality of walls forming four sides of a box when raised around the loading area; | The accused product is described as comprising "multiple walls forming four sides of a box raised around a loading area for a pallet." | ¶16 | col. 3:39-42 |
| at least one wall of the first plurality of walls that raises and lowers adjacent a loading area for a pallet, the box raising to a first level to receive items on the pallet, the box raising to a second level to receive more items on the pallet; | An annotated photograph asserts that a "telescoping structure" and "piston" guide the wall as it raises and lowers to a first and second level. | ¶17 | col. 4:46-50 |
| wherein the at least one wall is raised to maintain a border around the loading area for the items to be stacked within the loading area on the pallet; | The complaint alleges the walls maintain a border around the pallet during loading. | ¶16 | col. 4:57-60 |
| wherein the first plurality of walls pull away from the loading area after loading the pallet; | An annotated photograph shows pneumatic cylinders and pistons that allegedly permit the walls to "pull away (i.e., 'tilt back')" from the loading area after loading. | ¶18 | col. 4:26-32 |
| wherein the gate opens after the pallet has been loaded so that the loaded pallet can be moved out of the loading area and a next pallet can be moved into the loading area. | The complaint alleges the gate opens after loading, and an annotated photograph shows a "pallet on conveyer belt" which permits pallet movement into and out of the area. | ¶19 | col. 3:11-16 |
Identified Points of Contention
- Scope Questions: The complaint alleges the accused product's walls "pull away (i.e., 'tilt back')" (Compl. ¶18). A central question may be whether this "tilting back" motion, where the top of the wall moves away from the stack, satisfies the claim limitation "pull away." The patent specification also describes an embodiment where side walls "expand or 'angle out' at the top" (ʼ199 Patent, col. 3:20-22), which may support the plaintiff's interpretation.
- Technical Questions: Claim 1 requires raising to a "first level" and a "second level." The complaint alleges this occurs (Compl. ¶17), but the case may turn on what evidence is produced to demonstrate that the accused product operates with discrete, stepped levels as opposed to a continuous upward motion.
V. Key Claim Terms for Construction
- The Term: "pull away"
- Context and Importance: This term is critical because the infringement allegation hinges on whether the accused product's "tilt back" motion falls within its scope. The defendant may argue for a narrower definition requiring a uniform, parallel movement of the entire wall structure away from the pallet stack.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent specification describes an embodiment where "the two side walls 20a and 20c may also expand or 'angle out' at the top to provide more room for the stacked pallet to exit" (ʼ199 Patent, col. 3:20-23). This language suggests that a tilting or angling motion is contemplated by the inventor as a way for the walls to move away from the stack.
- Evidence for a Narrower Interpretation: A defendant could argue that the plain and ordinary meaning of "pull away" implies a more complete separation than just tilting. Further, the patent's FIG. 2E, while showing an angled departure of the walls, might be argued to be just one specific embodiment, and that the general term "pull away" in the claim should be given a more standard interpretation that is not limited to that figure.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement, asserting that Hamer-Fischbein infringes system claim 12 when the accused product is "used or sold with a robot palletizer" and method claim 16 "indirectly" (Compl. ¶15). The factual basis alleged is Defendant's offer to sell the Hamer Mulch Stack Box with options that include a robot palletizer (Compl. ¶20, ¶27).
- Willful Infringement: The willfulness allegation is based on alleged knowledge of the '199 Patent as of September 30, 2019, the date the complaint states a demand letter was sent to the defendant (Compl. ¶22, ¶28).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute may depend on the court's answers to several key questions:
- A core issue will be one of definitional scope: can the claim term "pull away," which describes the walls moving from the completed pallet stack, be construed to cover the "tilt back" functionality allegedly performed by the accused product?
- A key evidentiary question will be one of functional operation: does the accused product's wall-raising mechanism operate in discrete "first" and "second" levels as claimed, or does it utilize a continuous motion that is technically distinct from the claim's requirements?
- A third question concerns liability for system claims: can the plaintiff prove that the defendant's act of offering the accused stack box with an "option" for a robot palletizer is sufficient to establish direct or indirect infringement of claim 12, which requires both components as part of the claimed system?