DCT
1:17-cv-01463
Plastipak Packaging Inc v. Niagara Bottling LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Plastipak Packaging, Inc. (Delaware)
- Defendant: Niagara Bottling, LLC (Delaware)
- Plaintiff’s Counsel: FISH & RICHARDSON P.C.
- Case Identification: 1:17-cv-01463, E.D. Va., 01/16/2018
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant’s regular and established place of business in the district—a $95 million manufacturing and bottling facility in Chesterfield County, Virginia—and its continuous and substantial business, including the sale of the accused products, within the district.
- Core Dispute: Plaintiff alleges that Defendant’s plastic water bottles and the preforms used to make them infringe seven patents related to "light-weighting" technology for plastic container neck finishes.
- Technical Context: The technology involves designing lighter plastic bottle preforms and necks to reduce material usage, manufacturing costs, and environmental impact, a key competitive factor in the high-volume beverage packaging industry.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with notice of infringement, including the asserted patents and claim charts, on October 17, 2017. Plaintiff further alleges that Defendant refused to meet to discuss the matter, which forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-06 | Earliest Priority Date for all Asserted Patents |
| 2007-09-13 | PTO Publication of Plastipak's Application |
| 2009-01-01 | Niagara launches its 16.9 oz Eco-Air bottle (approximate date) |
| 2014-10-14 | U.S. Patent No. 8,857,637 Issues |
| 2015-05-19 | U.S. Patent No. 9,033,168 Issues |
| 2015-09-22 | U.S. Patent No. 9,139,326 Issues |
| 2016-08-02 | U.S. Patent No. 9,403,310 Issues |
| 2016-12-20 | U.S. Patent No. 9,522,759 Issues |
| 2017-03-29 | Niagara begins operations at its Chesterfield, VA facility |
| 2017-08-22 | U.S. Patent No. 9,738,409 Issues |
| 2017-10-17 | Plastipak sends pre-suit notice letter to Niagara |
| 2017-12-20 | Niagara's attorney informs Plastipak that Niagara will not meet |
| 2017-12-26 | U.S. Patent No. 9,850,019 Issues |
| 2018-01-16 | Amended Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,857,637 - “Lightweight Plastic Container and Preform,” issued October 14, 2014
The Invention Explained
- Problem Addressed: The patent addresses the economic and efficiency desire to reduce the weight of plastic containers and the preforms used to create them, which in turn lowers material costs and improves stability during manufacturing and handling (Compl. ¶24-25; ’637 Patent, col. 1:18-24).
- The Patented Solution: The invention is a method of making a container from a preform with a specifically dimensioned, lighter neck portion. The patented design reduces the vertical height of the neck finish while retaining essential features like the support flange and tamper-evident formation, thereby lowering the preform's center of gravity for improved stability during manufacturing (’637 Patent, Abstract; col. 2:46-52). This is achieved by specifying that the vertical distance from the top of the dispensing opening to the lower surface of the support flange is 0.580 inches or less (’637 Patent, col. 2:35-39).
- Technical Importance: This lightweighting approach allows for significant savings in raw material and energy consumption in the mass production of beverage containers (Compl. ¶24-27).
Key Claims at a Glance
- The complaint asserts method claims 29 and 30-34 (Compl. ¶70). Independent claim 29 is representative.
- Claim 29 Elements:
- A method for making a container, comprising:
- providing a preform having a dispensing opening, a tamper-evident formation, a support flange with a lower surface, and a lower portion below the support flange;
- wherein the vertical distance from the dispensing opening to the lower surface of the support flange, including threads and the tamper-evident formation, is 0.580 inches or less, and the lower portion has an initial axial length; and
- forming a container.
U.S. Patent No. 9,033,168 - “Lightweight Plastic Container and Preform,” issued May 19, 2015
The Invention Explained
- Problem Addressed: As with the ’637 Patent, the technology seeks to create lighter, more stable, and more economical plastic containers (Compl. ¶24-25; ’168 Patent, col. 1:20-27).
- The Patented Solution: This patent claims the final container itself, rather than the method or preform. It describes a plastic blow molded container with a specifically defined neck portion that includes a support flange, threads, and a tamper-evident formation. The key inventive feature is the combination of a dispensing opening with an inner diameter of at least 22 mm and a vertical distance from the top of that opening to the lower surface of the support flange of 0.580 inches or less (’168 Patent, Abstract; col. 6:52-66). This combination achieves the weight reduction while maintaining functionality.
- Technical Importance: The invention provides a specific blueprint for a finished lightweight container that achieves material savings while remaining compatible with industry-standard filling and capping equipment (Compl. ¶21, 26).
Key Claims at a Glance
- The complaint asserts claims 1-5, 7-18, 20-23, and 26-30 (Compl. ¶81). Independent claim 1 is representative.
- Claim 1 Elements:
- A plastic blow molded container, comprising:
- a hollow body portion including a lower supporting base portion;
- a sidewall portion extending upwardly from the base portion;
- a neck portion extending upwardly from the sidewall portion, the neck portion including a support flange, threads, a tamper-evident formation, and a dispensing opening with an inner diameter of at least 22 mm;
- wherein the vertical distance from the top of the dispensing opening to the lower surface of the support flange is 0.580 inches or less.
Multi-Patent Capsules
- U.S. Patent No. 9,139,326: Titled “Lightweight Plastic Container and Preform,” issued September 22, 2015. This patent claims a blow molded container where the support flange is positioned below the tamper-evident formation and multiple-lead threads are used. Asserted claims include 1-6, 8-13, 15-23, and 29-30 (Compl. ¶106). The accused features are the Niagara bottles, which allegedly have these structural characteristics and dimensions (Compl. ¶107).
- U.S. Patent No. 9,403,310: Titled “Lightweight Plastic Container and Preform,” issued August 2, 2016. This patent claims the plastic preform itself, reciting structural elements like multiple-lead threads and specific weight and dimensional limitations. Asserted claims include 1-5, 7-9, and 11-21 (Compl. ¶136). The accused features are the preforms Niagara uses to manufacture its bottles (Compl. ¶137).
- U.S. Patent No. 9,522,759: Titled “Lightweight Plastic Container and Preform,” issued December 20, 2016. This patent claims a blow molded container defined by specific dimensional ratios, outside diameters, and weights, including a ratio of the center of gravity to the container height of less than 0.57. Asserted claims include 1-5, 7-18, and 20-30 (Compl. ¶160). The accused features are Niagara's bottles, which allegedly meet these specific weight and stability characteristics (Compl. ¶161-167).
- U.S. Patent No. 9,738,409: Titled “Lightweight Plastic Container and Preform,” issued August 22, 2017. This patent claims a container assembly, which includes the blow molded container and a closure configured to receive the threads. Asserted claims include 1-5, 7-19, and 21-30 (Compl. ¶178). The accused features are Niagara's bottled water products, which include both a container and a closure (Compl. ¶179-180).
- U.S. Patent No. 9,850,019: Titled “Lightweight Plastic Container and Preform,” issued December 26, 2017. This patent claims a plastic preform with specific features including multiple-lead threads, a support flange, and particular weight and dimensional limitations, such as a neck portion weight of 2.3 grams or less. Asserted claims include 1-5, 7-18, and 20-30 (Compl. ¶200). The accused features are the preforms used to make Niagara's bottles (Compl. ¶201-202).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are Niagara’s 8 oz, 10 oz, 16.9 oz, 20 oz, 24 oz, and 1 liter brand, private label, and store brand bottled water products, as well as the plastic preforms used to manufacture them (Compl. ¶38, 47).
Functionality and Market Context
- The accused products are PET beverage containers and their precursors, manufactured through an injection molding and stretch blow-molding process (Compl. ¶13, 19). The complaint alleges the products incorporate a lightweight neck finish that includes threads, a tamper-evident formation, and a support flange (Compl. ¶41). The complaint provides an image showing a close-up of the accused neck finish (Compl. ¶41). It further alleges that Niagara markets these products based on their lightweight properties, claiming they are the "lightest bottles in the world with the least carbon footprint" (Compl. ¶48). The complaint provides a visual lineup of the accused bottle sizes (Compl. ¶39).
IV. Analysis of Infringement Allegations
’637 Patent Infringement Allegations
| Claim Element (from Independent Claim 29) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| providing a preform having a dispensing opening, a tamper-evident formation, a support flange with a lower surface, and a lower portion below the support flange; | Niagara manufactures plastic preforms to produce its containers (Compl. ¶12, 38). The complaint alleges these preforms have the claimed structural features (Compl. ¶71). | ¶12, 38, 71 | col. 8:3-6 |
| wherein the vertical distance from the dispensing opening to the lower surface of the support flange, including threads and the tamper-evident formation, is 0.580 inches or less... | The complaint alleges this vertical distance on accused products is "approximately 0.38 inches" or "approximately 0.45 inches," both of which are less than the claimed 0.580 inches (Compl. ¶42, 46, 71). | ¶42, 46, 71 | col. 8:7-10 |
| and forming a container. | Niagara stretch blow-molds its preforms at its facilities to form the final bottled water containers (Compl. ¶19, 74). | ¶19, 74 | col. 8:12 |
’168 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plastic blow molded container, comprising: a hollow body portion... a sidewall portion... and a neck portion... | Niagara’s accused products are plastic blow molded containers with the alleged body, sidewall, and neck portions (Compl. ¶82). | ¶82 | col. 6:50-55 |
| the neck portion including a support flange... threads; a tamper-evident formation... and a dispensing opening... | The neck finish of Niagara's bottles is alleged to have a support flange, threads, and a tamper-evident formation, as shown in the complaint's visual evidence (Compl. ¶41, 82). | ¶41, 82 | col. 6:55-61 |
| the dispensing opening having... an inner diameter that is at least 22 mm; | For at least the 8 oz and 16.9 oz products, the complaint alleges the dispensing opening has an inner diameter of at least 22 mm and less than 29 mm (Compl. ¶83). | ¶83 | col. 6:61-63 |
| wherein the vertical distance from the top of the dispensing opening to the lower surface of the support flange... is 0.580 inches or less. | For all accused products, the complaint alleges this vertical distance is "less than 0.450 inches" (Compl. ¶84). | ¶84 | col. 6:63-66 |
- Identified Points of Contention:
- Scope Questions: The claims recite hard numerical limits (e.g., "0.580 inches or less"). The complaint alleges values that are "approximately" a certain number (Compl. ¶42, 46). This raises the question of whether the accused products literally meet the claimed limitations or if there will be a dispute over measurement precision and methodology.
- Technical Questions: Many asserted dependent claims rely on the specific "weight of the neck portion" (e.g., Compl. ¶96). A factual question for the court will be how the "neck portion" is defined and demarcated from the rest of the bottle for weighing purposes, and whether the evidence supports the complaint's assertion that the accused necks are below the claimed weight thresholds.
V. Key Claim Terms for Construction
The Term: "vertical distance from the top of the dispensing opening to the lower surface of the support flange"
Context and Importance: This dimensional limitation is the central feature defining the "lightweight" aspect of the patented technology across multiple asserted patents. The entire infringement analysis for numerous claims will depend on how this distance is measured and whether the accused products fall within the claimed maximum value.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The plain language of the claim itself—"0.580 inches or less"—provides the boundary. The specification refers to this as distance 'X' in FIG. 5, providing a general visual guide (’637 Patent, col. 7:42-45).
- Evidence for a Narrower Interpretation: The specification discloses narrower, preferred embodiments, stating "For some embodiments, X may be 0.500 inches or less; for other embodiments, vertical distance X may be less than 0.450 inches" (’637 Patent, col. 7:45-48). A party could argue that these specific examples should inform or limit the scope of the broader claimed value.
The Term: "neck portion"
Context and Importance: The definition of this term is critical for determining infringement of numerous dependent claims that are limited by the "weight of the neck portion" (Compl. ¶96, 108). The boundary between the "neck portion" and the "shoulder portion" or "hollow body portion" must be determined to accurately calculate this weight.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification generally describes the neck portion (16) as extending up from the sidewall (14) and including the flange, threads, and tamper-evident features, as depicted in FIG. 1 (’168 Patent, col. 2:31-36).
- Evidence for a Narrower Interpretation: The patent explicitly distinguishes the "neck portion" from a "shoulder portion" (15), which may "extend inwardly into the neck portion 16" (’168 Patent, col. 2:42-46). This distinction suggests a definable boundary exists, and the specific geometry shown in the cross-section of FIG. 5 may be argued to be the definitive guide for establishing that boundary for measurement purposes.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement to infringe for several patents. The basis for these allegations is that Niagara sells the accused products to customers for subsequent resale and provides "marketing material and/or product packaging intended to promote subsequent use and re-sale" (Compl. ¶100, 130, 172, 194).
- Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this on pre-suit knowledge stemming from an October 17, 2017, letter that allegedly included copies of the patents and claim charts (Compl. ¶65). The allegation is further supported by Niagara’s subsequent refusal to meet or provide a substantive non-infringement defense, which Plastipak characterizes as deliberate and wanton continuation of infringement (Compl. ¶67-68, 78).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of factual correspondence: does the physical geometry of Niagara's products, when measured and weighed, literally meet the precise numerical limitations recited in the asserted claims? The complaint’s use of terms like "approximately" and the patents' focus on specific weights and sub-millimeter dimensions suggest that discovery and expert testimony on measurement techniques will be critical.
- The case may also turn on a question of claim construction: how should key limitations such as the "vertical distance" of the neck finish and the boundaries of the "neck portion" be defined? The court's interpretation of these terms, guided by the patent specifications and figures, will directly control the scope of the claims and the ultimate infringement determination.
- Finally, a key question for damages will be willfulness: did Niagara's alleged refusal to engage with Plastipak after receiving a detailed pre-suit notice of infringement constitute the type of egregious conduct that would justify an award of enhanced damages under 35 U.S.C. § 284?