Great Northern Corp v. Timely Inventions LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Great Northern Corporation (Wisconsin)
  • Defendant: Timely Inventions, LLC (Delaware)
  • Plaintiff’s Counsel: DeWitt Ross & Stevens S.C.
• Case Identification: 2:18-cv-00645, E.D. Wis., 04/24/2018
• Venue Allegations: Plaintiff alleges venue is proper because Defendant has engaged in commerce and has substantial and continuous contacts within the Eastern District of Wisconsin.
• Core Dispute: Plaintiff seeks a declaratory judgment that its packaging products do not infringe Defendant's patent and that the patent is invalid, preempting a potential infringement suit from the Defendant, who has already sued Plaintiff's customer.
• Technical Context: The technology concerns dual-purpose packaging for bulk goods, which functions as a protective shipping container and converts into a point-of-sale retail display, a common feature in wholesale club stores.
• Key Procedural History: This action for declaratory judgment was filed by Great Northern Corporation (GNC) after its customer, 3M, was sued by Timely Inventions for patent infringement in the Central District of California. GNC states it has an obligation to indemnify 3M. The complaint also details a prior ex parte reexamination request against the patent-in-suit, which the USPTO denied on the grounds that the submitted prior art drawing did not qualify as a "printed publication."

Case Timeline

Date	Event
2004-07-15	Alleged creation date of the "464 Drawing" prior art.
2004-10-22	Alleged first commercial shipment of the "Holiday Pallet Display."
2007-11-19	Alleged development date of the "Allpak" prior art assembly.
2008-12-16	Priority Date for '865 Patent (Application Filing Date).
2011-01-04	U.S. Patent No. 7,861,865 Issues.
2011-09-09	Request for Ex Parte Reexamination of the '865 Patent filed.
2015-03-01	Master Supply Agreement executed between GNC and 3M.
2017-12-07	Timely Inventions files infringement suit against 3M in C.D. Cal.
2018-04-24	Complaint for Declaratory Judgment filed by GNC.

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

U.S. Patent No. 7,861,865 - "PACKAGING ASSEMBLY"

The Invention Explained

• Problem Addressed: The patent addresses the cost and waste associated with conventional bulk packaging, where shipping materials like cardboard panels and shrink-wrap are discarded upon arrival at a retail location, and separate display structures may be needed ('865 Patent, col. 1:13-18, 47-54).
• The Patented Solution: The invention is a convertible packaging system where side panels serve a dual purpose. For shipping, the panels fold upward to form a protective box around products stacked on a pallet. For retail display, the same panels fold downward to hide the pallet and present advertising to consumers, eliminating the need for separate shipping and display components ('865 Patent, Abstract; col. 2:5-22). The transition from a shipping configuration (Fig. 4) to a display configuration (Fig. 7) illustrates this core functionality.
• Technical Importance: The design aims to integrate the shipping and display functions into a single reusable component, thereby reducing material waste, labor costs, and time required to move products from the stockroom to the sales floor ('865 Patent, col. 1:55-62).

Key Claims at a Glance

• The complaint references allegations of infringement of at least independent claim 1 from a related lawsuit (Compl. ¶41) and seeks a declaration of non-infringement for all claims. Independent claims 1 and 19 are the broadest in the patent.
• Independent Claim 1: The essential elements are:
  • A pallet with upper side edges.
  • Product containers arranged on the pallet.
  • A plurality of side panels, each having a "mounting flap" and a "main flap" sharing a fold line.
  • The mounting flap is affixed to the pallet with the fold line at the pallet's upper edge.
  • The main flaps fold upwardly to "substantially enclose" the products for shipment.
  • The main flaps fold downwardly to "cover the pallet" for display.
  • The "first face" of the main flap (e.g., with advertising) is visible only in the downward/display position.
• Independent Claim 19: This claim adds further specificity, requiring:
  • A "first pair" of opposing side panels that include "side tabs."
  • A "second pair" of opposing side panels that overlap the side tabs of the first pair.
  • "Means for securing" the flaps together.

III. The Accused Instrumentality

• Product Identification: The "COMMAND packaging assembly" manufactured by GNC and sold to customers, including 3M, for distribution and sale through retailers like Costco (Compl. ¶¶35, 36, 43).
• Functionality and Market Context: The complaint does not provide a detailed technical description of the GNC product's operation. Instead, it focuses on establishing a controversy by referencing the infringement lawsuit filed by Timely Inventions against GNC's customer, 3M, which accuses the "COMMAND packaging assembly" of infringement (Compl. ¶¶41-43). The complaint alleges that GNC has an indemnification obligation to 3M under a Master Supply Agreement (Compl. ¶¶38-40). The core of GNC's complaint is not a feature-by-feature denial of infringement, but rather an assertion that the '865 patent is invalid in light of prior art that allegedly contains all the claimed elements (Compl. ¶¶23, 34, 55). A photograph from an affidavit shows a fully constructed prior art pallet display, loaded with products, assembled according to an allegedly anticipatory 2004 drawing (Compl. ¶28, Exhibit I p. 22).

IV. Analysis of Infringement Allegations

The complaint references a preliminary infringement claim chart from the related California lawsuit but does not attach it (Compl. ¶44). The infringement theory from that lawsuit, as summarized in this complaint, is that the "COMMAND packaging assembly" sold by 3M and manufactured by GNC meets all the limitations of at least claim 1 of the ’865 Patent (Compl. ¶43). The theory appears to assert that GNC’s product is a packaging assembly that embodies the patented combination of a pallet, product containers, and convertible side panels that fold up for shipping and down for display.

However, the primary dispute framed by GNC in this declaratory judgment action centers on invalidity, not infringement. The complaint alleges that at least two prior art systems, the "Holiday Pallet Display" sold in 2004 and the "Allpak" assembly developed in 2007, predate the '865 Patent’s 2008 priority date and contain every element of the asserted claims (Compl. ¶¶23, 30, 33-34).

• Identified Points of Contention:
  • Validity Question: The central issue raised by the complaint is whether the '865 Patent is invalid as anticipated by or obvious in light of the "Holiday Pallet Display" and/or the "Allpak" assembly (Compl. ¶¶54-55).
  • Evidentiary Question: A key question for the court will be the status of the "464 Drawing," which GNC alleges depicts the "Holiday Pallet Display" (Compl. ¶23). The complaint notes the USPTO previously declined to consider this drawing in a reexamination because it was not deemed a "printed publication" (Compl. ¶32). A court, operating under different evidentiary rules, may have to determine the drawing's admissibility and weight as prior art.
  • Technical Question: Assuming the patent is found valid, the infringement analysis would turn on whether the GNC "COMMAND" assembly has the specific structure recited in the claims, particularly the "mounting flap" and "main flap" configuration that is "interposed between the pallet and the plurality of product containers" ('865 Patent, col. 6:17-18).

V. Key Claim Terms for Construction

• The Term: "substantially enclose"

• Context and Importance: This term defines the required function of the side panels in their upward, shipping position ('865 Patent, col. 6:24). The degree of enclosure required could be a key point of dispute. Practitioners may focus on this term because its breadth could determine whether a product that merely contains or corrals items, rather than forming a sealed box, falls within the claim scope.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes securing the abutting side panels with "tape 38, or other suitable securing material" ('865 Patent, col. 5:4-5), which may suggest the panels themselves do not form a perfect enclosure and that "substantially" allows for gaps at the corners.
  • Evidence for a Narrower Interpretation: The patent states the upwardly folded panels define a "storage cavity" that is "box-shaped" and provides "structural support for the plurality of product containers during shipping" ('865 Patent, col. 4:26-28, 66-68). This could support an interpretation requiring a more rigid, structurally complete enclosure.

• The Term: "side panels"

• Context and Importance: The "side panels" are the central component of the invention. Their definition is critical, as the claims require a specific two-part structure (mounting flap and main flap) arranged in a particular way relative to the pallet and products.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes the panels as being of "unitary construction" and made from a "fairly rigid sheet material, such as corrugated cardboard" ('865 Patent, col. 3:52-54), suggesting flexibility in the specific material used.
  • Evidence for a Narrower Interpretation: Claim 1 strictly requires each panel to include both a "mounting flap" and a "main flap" that "share a fold line," with the mounting flap being "interposed between the pallet and the plurality of product containers" ('865 Patent, col. 6:11-18). Any accused product that integrates these functions differently or omits one of these distinct structural elements may be argued to fall outside the literal scope of the claim.

VI. Other Allegations

• Indirect Infringement: GNC seeks a judicial declaration that it has not contributed to or induced the infringement of any valid claim of the '865 Patent (Compl. ¶51). The complaint does not, however, detail the specific factual allegations of indirect infringement made by Timely Inventions in the underlying lawsuit against 3M.

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

This case, initiated as a declaratory judgment action, frames the dispute primarily around patent validity rather than non-infringement. The key questions for the court appear to be:

• A central issue will be one of validity: Do the "Holiday Pallet Display" (from 2004) or the "Allpak" assembly (from 2007), as alleged in the complaint, constitute invalidating prior art under 35 U.S.C. § 102 or § 103, thereby rendering the '865 Patent unenforceable?
• A key evidentiary question will be the status of prior art evidence: What legal weight, if any, will the court give to the "464 Drawing," which the USPTO previously declined to consider in reexamination because it was not deemed a "printed publication"? The court's determination on the admissibility and effect of this and related evidence could be dispositive.
• Should the patent survive the validity challenge, the case will turn to a question of structural correspondence: Does GNC’s "COMMAND packaging assembly" incorporate the specific two-part "mounting flap" and "main flap" structure that is affixed and "interposed between the pallet and the...product containers" in the precise manner required by the patent's claims?