DCT
5:17-cv-02318
Free Flow Packaging Intl Inc v. Automated Packaging Systems Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Free-Flow Packaging International, Inc. (Delaware)
- Defendant: Automated Packaging Systems, Inc. (Ohio)
- Plaintiff’s Counsel: Thompson Hine LLP; Latham & Watkins LLP
- Case Identification: 5:17-cv-02318, N.D. Ohio, 11/10/2017
- Venue Allegations: Venue is alleged to be proper in the Northern District of Ohio because Defendant resides in the district, has committed acts of infringement there, and maintains a regular and established place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s on-demand inflatable packaging films and the system used to inflate them infringe two patents related to the structure of inflatable packaging cushions and the machinery for their production.
- Technical Context: The technology relates to on-demand protective packaging systems, where flat plastic film is inflated at the point of use to create cushioning materials for shipping, reducing the costs associated with transporting pre-inflated packing materials.
- Key Procedural History: The complaint notes that a related patent, U.S. Patent No. 7,536,837, was previously litigated and its claims found invalid. It further alleges that the U.S. Patent and Trademark Office was made aware of that litigation during the prosecution of the '743 Patent, which subsequently issued. The complaint also alleges Defendant had actual knowledge of its infringement since at least April 4, 2017, due to service of a complaint in a prior case filed in the Northern District of California.
Case Timeline
| Date | Event |
|---|---|
| 1999-03-09 | Priority Date for ’774 and ’743 Patents |
| 2012-12-04 | U.S. Patent No. 8,323,774 Issued |
| 2015-04-14 | U.S. Patent No. 9,003,743 Issued |
| 2017-04-04 | Alleged Actual Notice of Infringement (Service of Prior Complaint) |
| 2017-11-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,323,774, "Film Material for Air-Filled Packing Cushions", Issued December 4, 2012
The Invention Explained
- Problem Addressed: The patent addresses the technical challenges of reliably sealing air-filled packaging pillows while the film is continuously moving through an inflation machine, which is necessary for efficient, on-site production (U.S. Patent No. 8,323,774, col. 2:5-24).
- The Patented Solution: The invention is a preconfigured web of plastic film designed for this process. It features a continuous, longitudinal channel along one edge that guides the film and distributes air. Spaced along this channel are inflatable pillow chambers, each connected to the channel by a narrow inlet port. The film's specific structure, including these preformed elements, is designed to facilitate automated inflation and sealing while in motion (’774 Patent, col. 2:38-55, Abstract).
- Technical Importance: This technology enables compact, on-demand systems that create protective packaging at the user's location, which is more economical and space-efficient than using and storing pre-inflated materials (’774 Patent, col. 1:52-60).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶24).
- Essential elements of Claim 1 include:
- A preconfigured plastic film comprising a web of material with a leading and trailing end.
- A longitudinal channel extending the entire length of the material near an edge, with the channel open at the leading end.
- A plurality of generally rectangular inflatable chambers, each with three closed sides and a fourth side having an unsealed opening into the channel.
- Preformed seal line elements inside the chambers that permit the chambers to be folded along a line running through the elements.
- A plurality of laterally extending perforations separating chambers, extending at least partway across the material's width.
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 9,003,743, "Apparatus for Inflating and Sealing Pillows in Packaging Cushions", Issued April 14, 2015
The Invention Explained
- Problem Addressed: The patent addresses the same problem as the ’774 Patent: the need for a compact, efficient, and continuous system for producing inflated packaging pillows on-demand (’743 Patent, col. 2:5-24).
- The Patented Solution: This patent claims the complete system, combining a specific type of plastic film with an inflation machine designed to handle it. The machine incorporates distinct mechanisms—for feeding the film, inflating the chambers, heat-sealing the inlets, and slitting the inflation channel—that work in concert to transform the flat film into a string of sealed air cushions in a continuous, uninterrupted process (’743 Patent, col. 14:11-34, Abstract).
- Technical Importance: By claiming the integrated system of both the machine and the consumable film, the invention provides a complete, end-to-end solution for automated, on-site protective packaging production (’743 Patent, col. 1:26-34).
Key Claims at a Glance
- The complaint asserts infringement of at least independent claim 1 (Compl. ¶37).
- Essential elements of Claim 1 include:
- A system comprising (a) a specific longitudinally extending plastic film and (b) an inflation machine.
- The film (a) has a narrow longitudinal channel, at least one row of rectangular chambers with three closed sides and one open side, and laterally extending perforations separating the chambers.
- The machine (b) comprises:
- A feed mechanism to draw the film in a continuous, uninterrupted, planar path.
- An inflation mechanism to inject gas into the film's channel.
- A sealing mechanism with an electrically energized heating element to seal the chambers.
- A slitting mechanism with a blade to slice open the channel after inflation.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
Product Identification
- For the ’774 Patent, the accused products are various lines of inflatable film, including "Bubbles on Demand" and "AirPouch Twin Pillows," collectively referred to as the "Accused '774 Products" (Compl. ¶¶11, 12, 13).
- For the ’743 Patent, the accused instrumentality is the "Accused Automated System," which comprises the AirPouch® Express 3™ inflation machine used in combination with the "Accused Automated EZ-Tear Webs" (Compl. ¶¶15, 19, 21, 38).
Functionality and Market Context
- The complaint alleges that the accused films are sold in an uninflated state and are designed to be inflated on-demand by a consumer using an inflation machine (Compl. ¶14).
- The accused system, combining the AirPouch® Express 3™ machine and EZ-Tear Webs, is described as a tabletop system that provides "on-demand, easy-to-use air pillows for high packing productivity" (Compl. ¶20). The complaint alleges the system is used for manufacturing air cushions for packaging dunnage (Compl. ¶38). An image from the complaint shows the AirPouch® Express 3™ machine inflating a web of plastic film (Compl. p. 11, ¶38).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,323,774 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a longitudinal channel extending near an edge of the material and extending the entire length of the material without interruption, wherein the channel is open at the leading end of the material | The accused films allegedly have a longitudinal channel at the top of the material that extends its length and is open at the leading end to allow loading onto an inflation machine. An annotated image highlights this channel (Compl. p. 7). | ¶26 | col. 14:12-16 |
| a plurality of generally rectangular inflatable chambers each having three sides closed and a fourth side with an unsealed opening into the longitudinally extending channel | The complaint alleges the accused films' chambers have four sides, one of which has an unsealed opening into the inflation channel. An annotated diagram shows the first, second, and third sealed sides and the fourth unsealed side (Compl. p. 8). | ¶27 | col. 14:17-19 |
| and preformed seal line elements within the interior of the chambers to permit the chambers to be folded along a line extending through the seal line elements | The accused films allegedly contain preformed elements inside the chambers that permit folding. An annotated image illustrates example axes for folding along these lines (Compl. p. 8). | ¶27 | col. 14:20-23 |
| and a plurality of laterally extending perforations separating each chamber or a plurality of chambers, wherein the laterally extending perforations extend at least partway across the width of the material | The accused films allegedly have lateral perforations that separate the chambers. An annotated photo highlights these perforations (Compl. p. 9). | ¶28 | col. 14:24-28 |
Identified Points of Contention
- Scope Questions: A potential dispute may arise over the term "preformed seal line elements." The analysis may question whether the structures inside the accused products' chambers are "seal line elements" and whether their function is to "permit the chambers to be folded" as required, or if they serve an alternative technical purpose.
- Technical Questions: What evidence does the complaint provide that the internal structures in the accused product actually facilitate folding, beyond the conclusory allegation and annotated diagrams? The court may require technical evidence demonstrating this functionality.
U.S. Patent No. 9,003,743 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| (a) a longitudinally extending plastic film comprising a relatively narrow longitudinally extending channel, at least one row of generally rectangular presealed inflatable chambers each having three sides closed and a fourth side with an unsealed opening into the longitudinally extending channel, and a plurality of laterally extending perforations separating the inflatable chambers... | The "Accused Automated EZ-Tear Webs" are alleged to be a plastic film with a narrow longitudinal channel, rectangular chambers with three closed sides and one unsealed side, and perforations separating the chambers. | ¶39 | col. 14:3-10 |
| (b) an inflation machine for inflating the inflatable chambers of the plastic film, the inflation machine comprising: a feed mechanism that causes the plastic film to be... drawn in a continuous and uninterrupted manner... in a planar path | The AirPouch® Express 3™ machine allegedly contains a "feed mechanism" that pulls the film through the machine. An annotated photo identifies this component (Compl. p. 14). | ¶41 | col. 14:12-16 |
| wherein the inflation mechanism comprises a source of inflation gas and an air outlet which together cause inflation gas to be injected into the relatively narrow longitudinally extending channel | The machine allegedly includes an "inflation mechanism" that pumps compressed air into the film material. | ¶42 | col. 14:17-23 |
| wherein the sealing mechanism comprises an electrically energized heating element that generates heat to be delivered to the inflation side of one or more of the inflatable chambers to seal the unsealed opening | The machine allegedly contains a "sealing mechanism" that heat-seals the film after it is filled with air. An annotated photo depicts the "Heat-sealed film" exiting the machine (Compl. p. 15). | ¶43 | col. 14:24-30 |
| wherein the slitting mechanism comprising a blade that slices open the relatively narrow longitudinally extending channel of the plastic film as the film is drawn through the slitting mechanism | The machine allegedly includes a "slitting mechanism" with a blade that slices open the film's narrow channel. An annotated photo shows a close-up of this blade (Compl. p. 15). | ¶44 | col. 14:31-34 |
Identified Points of Contention
- Prosecution History Questions: The complaint states that the ’743 Patent "made a narrowing change to exclude perforations 'separating each chamber or multiple chambers'" (Compl. ¶36), yet the infringement allegation relies on the presence of "laterally extending perforations separating the inflatable chambers" in the accused film (Compl. ¶39), a feature which is also explicitly recited in the asserted claim. This raises the question of whether the complaint's characterization of the prosecution history is accurate and how that history affects the construction of the claim term "perforations."
- Technical Questions: Does the accused "feed mechanism" operate in a "continuous and uninterrupted manner" and in a "planar path" as strictly required by the claim? The complaint offers photos but does not provide detailed evidence on the precise operational characteristics of the machine.
V. Key Claim Terms for Construction
For U.S. Patent No. 8,323,774:
- The Term: "preformed seal line elements within the interior of the chambers"
- Context and Importance: The existence and function of these elements are a specific technical feature of the claimed film. Practitioners may focus on this term because its construction will determine whether various internal film structures, which may have other primary purposes (e.g., affecting inflation characteristics), meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim uses the functional language "to permit the chambers to be folded," which could be argued to cover any internal element that allows or enables folding, regardless of its shape or primary design purpose (’774 Patent, col. 14:21-23).
- Evidence for a Narrower Interpretation: The specification shows these elements as specific, discrete interior seal lines (e.g., element 62 in FIG. 18). A party could argue the term should be limited to such explicit structures, not incidental features that might also permit folding.
For U.S. Patent No. 9,003,743:
- The Term: "drawn in a continuous and uninterrupted manner... in a planar path"
- Context and Importance: This phrase defines the required operation of the machine's feed mechanism. The dispute may turn on whether the accused machine’s real-world operation, which could involve micro-pauses or slight deviations, qualifies as "continuous and uninterrupted" and "planar."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s overall objective is efficient production. A party might argue that minor, incidental interruptions or deviations that do not frustrate this overall goal still fall within a common-sense reading of the term.
- Evidence for a Narrower Interpretation: The patent summary emphasizes the desirability of making a seal "as the web of plastic film is moved continuously and without any interruption and/or intermittent stopping" (’743 Patent, col. 2:15-18). This language could support a stricter construction requiring a truly constant and non-deviating motion.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant’s infringement has been willful. This allegation is based on claims of both constructive and actual knowledge. Constructive knowledge is asserted based on Plaintiff's patent marking website (Compl. ¶29, ¶45). Actual knowledge is asserted based on the service of a complaint in a prior lawsuit in the Northern District of California on or before April 4, 2017, which allegedly put Defendant on notice of its infringement of both the ’774 and ’743 patents (Compl. ¶29, ¶45).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of claim scope versus prosecution history: The complaint alleges the ’743 Patent was narrowed to "exclude perforations separating each chamber," yet its infringement theory and the plain language of asserted Claim 1 both require such perforations. The court will need to resolve this apparent contradiction by determining the proper claim scope in light of the statements made during prosecution.
- A key evidentiary question will be one of functional proof: For the ’774 patent, does the accused film’s "preformed elements" actually function "to permit the chambers to be folded" as claimed, or is this an incidental capability of a structure designed for a different purpose? For the ’743 patent, does the accused machine’s feed mechanism operate in a "continuous and uninterrupted manner" and "planar path" as strictly defined by the claims?
- A final question will concern willfulness: Did the service of a complaint in a prior, separate litigation provide Defendant with knowledge of infringement sufficient to support a finding of willful infringement for its conduct following that notice, and was that conduct objectively reckless?