DCT

6:10-cv-00012

Marshall Packaging Co LLC v. PepsiCo Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 6:10-cv-00012, E.D. Tex., 03/10/2010
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of Texas because Defendants conduct business in the state and place the accused infringing products into the stream of commerce with the expectation that they will be purchased by consumers in the district.
  • Core Dispute: Plaintiff alleges that Defendants’ beverage containers infringe a patent related to collapsible containers with helical structures designed to reduce internal volume.
  • Technical Context: The technology concerns beverage packaging, specifically containers designed to be compressed to minimize the gas-filled headspace above a liquid, which is particularly relevant for preserving the carbonation of soft drinks.
  • Key Procedural History: The patent-in-suit, RE 38,770, is the result of two separate reissue proceedings, originating from U.S. Patent No. 5,370,250. The prosecution history of these reissues may introduce arguments or claim amendments that could be relevant to construing the scope of the patent's claims. The complaint excludes from its infringement claims any containers licensed under previous agreements.

Case Timeline

Date Event
1992-01-21 ’770 Patent Priority Date
1994-12-06 Original U.S. Patent No. 5,370,250 Issued
1999-11-09 First Reissue Patent No. Re. 36,377 Issued
2005-08-09 Second Reissue Patent No. Re. 38,770 Issued
2010-02-26 Defendant PBG merged with Pepsi-Cola Metropolitan Bottling Company
2010-03-10 Plaintiff's First Amended Complaint Filed

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

U.S. Patent No. RE 38,770 - "Collapsible Container"

The Invention Explained

  • Problem Addressed: The patent addresses the problem of fixed-volume containers for products that are dispensed intermittently, such as carbonated beverages. As the liquid is consumed, the volume of gas (headspace) above the liquid increases, causing carbonated drinks to lose their effervescence and go "flat" (RE 38,770 Patent, col. 2:1-8). Existing collapsible designs were described as having drawbacks like inefficient collapsation or highly contoured surfaces that made labeling difficult (RE 38,770 Patent, col. 1:31-35, col. 2:45-52).
  • The Patented Solution: The invention is a container with a generally cylindrical side wall that includes a "collapsible helical portion" defined between groove portions. This structure allows the container to be controllably compressed, often by engaging it with a threaded cup and rotating it, which reduces the container's internal volume as the contents are used up (RE 38,770 Patent, col. 2:55-65; Fig. 7). This compression minimizes the headspace, thereby preserving carbonation (RE 38,770 Patent, col. 2:1-8).
  • Technical Importance: The invention sought to provide an improved packaging solution in the large soft-drink industry by enabling consumers to better preserve product quality after opening (RE 38,770 Patent, col. 2:39-44).

Key Claims at a Glance

  • The complaint asserts infringement of the patent generally, without specifying claims (Prayer for Relief ¶A). The analysis below focuses on Independent Claim 1, the broadest independent claim.
  • Independent Claim 1:
    • A longitudinally collapsible container comprising a top portion and a base portion joined by a generally cylindrical side wall structure,
    • said generally cylindrical side wall structure having a longitudinal central axis and a collapsible helical portion,
    • said collapsible helical portion having a collapsible surface of generally uniform radius extending generally parallel with respect to said central axis,
    • wherein said collapsible helical portion is defined between first and second longitudinally spaced groove portions,
    • one of said groove portions traveling at least 360° around the generally cylindrical side wall structure.
  • The complaint does not explicitly reserve the right to assert dependent claims.

III. The Accused Instrumentality

Product Identification

  • The complaint accuses "certain collapsible beverage containers" sold under various brand labels, including but not limited to “Aquafina,” “Lipton,” “Safeway Refreshe,” and “Athena” (Compl. ¶¶14, 15, 17-20).

Functionality and Market Context

  • The complaint alleges these products are "collapsible beverage containers that use and embody the patented invention" (Compl. ¶14).
  • The complaint does not provide specific technical details about the structure or operation of the accused containers. The infringement allegations are based on the containers being sold by major beverage and retail companies, suggesting they have significant commercial distribution in the United States (Compl. ¶¶14-20).

IV. Analysis of Infringement Allegations

The complaint alleges that the accused products infringe the ’770 Patent but does not provide a detailed mapping of product features to claim elements. The following table summarizes the infringement theory based on the general allegations made against the accused containers.

RE 38,770 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A longitudinally collapsible container comprising a top portion and a base portion joined by a generally cylindrical side wall structure... The complaint alleges that the accused products, such as "Aquafina" and "Lipton" bottles, are collapsible containers with the requisite top, base, and side wall structure. ¶¶14-20 col. 4:11-16
...said generally cylindrical side wall structure having a longitudinal central axis and a collapsible helical portion... The accused containers are alleged to embody the patented invention, which includes a collapsible helical portion. ¶¶14-20 col. 7:44-46
...said collapsible helical portion having a collapsible surface of generally uniform radius extending generally parallel with respect to said central axis... The complaint's general allegation that the accused containers "embody the patented invention" suggests they are asserted to have a collapsible surface with this specific geometry. ¶¶14-20 col. 7:46-49
...wherein said collapsible helical portion is defined between first and second longitudinally spaced groove portions... The accused containers are alleged to possess the claimed structure, which requires the helical portion to be located between two spaced grooves. ¶¶14-20 col. 7:49-52
...one of said groove portions traveling at least 360° around the generally cylindrical side wall structure. The general infringement allegation implies that the accused containers possess a groove that extends for at least one full revolution around the container body. ¶¶14-20 col. 7:52-54

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • Technical Questions: A primary question will be whether the accused containers, which are often marketed as "lightweight" or "eco-friendly" and can be crushed for disposal, possess the specific "collapsible helical portion" and "groove portions" recited in the claims. The complaint does not provide evidence demonstrating that the structure of the accused bottles is designed for the controlled, twisting compression described in the patent, as opposed to simple crushing.
    • Scope Questions: The case may turn on whether the accused containers' physical features meet the definitions of claim terms like "collapsible helical portion" and "groove portions." The analysis will question if the indentations or ridges on bottles like the "Aquafina" container function as the claimed "grooves" that define a specific "helical portion" intended for controlled collapse.

V. Key Claim Terms for Construction

  • The Term: "collapsible helical portion"

  • Context and Importance: This term is the central feature of the invention. The infringement analysis will depend entirely on whether the physical structure of the accused bottles falls within the scope of this term. Practitioners may focus on this term because the accused bottles are designed to be crushed or twisted for disposal, and the court will need to determine if this functionality is the same as the controlled, reusable compression enabled by the claimed "collapsible helical portion."

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the portion as facilitating collapsation and being able to "fold and/or deform" (RE 38,770 Patent, col. 7:9-11), which could support an argument that any bottle with helical elements that allow for compression infringes.
    • Evidence for a Narrower Interpretation: The patent repeatedly describes the portion in the context of a system with an external threaded cup used to "fixedly and efficiency increase or decrease the internal volume" (RE 38,770 Patent, col. 1:38-40; Fig. 7). This context suggests the term implies a structure for controlled, reversible, and precise volume adjustment, not just disposable crushing.

  • The Term: "extending generally parallel with respect to said central axis"

  • Context and Importance: This term defines the geometry of the "collapsible helical portion." Whether the surfaces of the accused bottles' side walls meet this geometric constraint will be a key factual dispute. The term of degree "generally parallel" is frequently litigated.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: "Generally" implies some deviation from perfectly parallel is acceptable. An argument could be made that any side wall that is not overtly conical or tapered meets this limitation.
    • Evidence for a Narrower Interpretation: Figure 6 of the patent depicts a container (100) with a very straight, cylindrical profile, described as having a surface "extending generally parallel with respect to the central axis" (RE 38,770 Patent, col. 7:1-3). This embodiment may be used to argue for a narrower construction that excludes bottles with significant tapering or contouring.

VI. Other Allegations

  • Indirect Infringement: The complaint makes conclusory allegations that each Defendant "has also contributed to the infringement... and/or actively induced others to infringe the '770 Patent" (Compl. ¶¶14-20). The complaint does not, however, plead specific facts to support the knowledge and intent elements required for such claims, such as referencing user instructions or advertising that encourages infringing use.
  • Willful Infringement: The complaint does not contain factual allegations specifically supporting a claim for willful infringement (e.g., knowledge of the patent followed by continued infringement). The prayer for relief seeks attorneys' fees "due to the exceptional nature of this case," which is the legal standard associated with willfulness, but the factual basis for such a finding is not developed in the complaint (Prayer for Relief ¶C).

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

  • A core issue will be one of structural and functional equivalence: do the accused beverage containers, which are widely known to be crushable for disposal, possess the specific "collapsible helical portion" defined by "groove portions" that the patent describes as enabling controlled, incremental, and reversible compression to preserve carbonation? The case may depend on whether the design features of the accused bottles perform the same function, in the same way, to achieve the same result as the patented invention.
  • A second central question will be one of claim scope: can the term "collapsible helical portion," as defined in the patent, be construed broadly enough to read on the lightweight ribbing and indentation patterns found on modern disposable water bottles? The outcome will likely hinge on the court's construction of this and other key terms in light of the patent's specification and prosecution history.
  • An evidentiary question will be whether proof of infringement can be established. Given the notice-pleading style of the complaint, Plaintiff will need to produce expert testimony and technical evidence to demonstrate how the accused bottles meet each and every limitation of the asserted claims, particularly the specific geometric and functional requirements of the "collapsible helical portion."