Virginia Lawyers Weekly VA Lawyers Weekly
Where there were disputed issues of material fact on whether patents were indefinite, whether prior art rendered a patent obvious and whether a similar machine was on sale and publicly known at the time a patent was obtained, summary judgment was denied.
Background
This case is a patent dispute relating to aluminum can manufacturing. Crown Packaging Technology Inc. and CarnaudMetalbox Engineering Ltd. filed a complaint against Belvac Production Machinery Inc., alleging patent infringement claims involving three different patents: (1) the ‘570 patent; (2) the ‘982 patent and (3) the ‘425 patent. Belvac filed a counterclaim against Crown alleging patent infringement relating to its ‘445 patent. Now before the court are cross motions for summary judgment.
Infringement
Crown argues that even taking Belvac’s description of its machine as true, that Belvac has infringed Crown’s patents as a matter of law. It is a jury issue whether a component of an allegedly infringing machine is in fact “essential” (because that question is part of the broader issue of fact of whether the allegedly infringing machine does, in fact, infringe the claim or claims). Belvac has put forward evidence that the first stage of THE BELVAC’s necking process is essential for THE BELVAC to neck “at least 3000 beverage can bodies per minute.” Crown’s motion for summary judgment on infringement is denied.
Inequitable conduct
Belvac alleges inequitable conduct with respect to three of the patents. The court finds that there are three individuals who had a duty of candor to the Patent and Trademark Office or PTO: Dunwoody, Scholey, and Soumis. There is no genuine dispute that Dunwoody and Scholey knew about the ‘795 Necker because Belvac has not put that evidence into the record. And, although Soumis knew about the ‘795 Necker, there is no genuine dispute that he knew of its materiality or that he had specific intent to deceive the PTO. Therefore, the court will grant Crown’s motion on inequitable conduct.
Indefiniteness
Belvac must prove by clear and convincing evidence that the asserted “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” There is enough evidence in the record to create a triable issue on indefiniteness.
In particular, there is evidence from witnesses, including expert witnesses Walsh and Gillest, which construed in the light most favorable to Belvac suggests that the throat lengths described in the specification of the ‘982 Patent as “preferabl[e]” to “improve the concentricity of the can end” cannot in fact achieve full piloting, and thus would not “enhance concentricity” under the court’s claim construction. Crown’s motion on indefiniteness denied.
Derivation
Belvac’s derivation argument is based on its allegation that the CMB 3400 is derived from technology that Belvac developed, and thus that Crown’s patents relating to the CMB 3400 are derived from technology that Crown did not develop, and are thus invalid. The court must, then, determine whether there is sufficient evidence in the record to create a genuine dispute of material fact on whether the 595SK was in fact “prior art” and that the differences between the CMB3400 and the 595SK were such that the claimed invention would have been obvious before the effective filing date. There is. Crown’s motion for summary judgment on this issue denied.
NC-10 Necker
Crown’s next summary judgment motion relates to the Reynolds NC-10 Necker, a necking machine invented by a third party in the 1980s that Belvac alleges had the same front-side “winder assembly” that Crown later claimed in the ’425 Patent. If Belvac could show at trial that the NC-10 Necker was publicly known and on sale before the ‘425 patent’s priority date, then Belvac could show that Crown does not have a valid patent.
Because there is a dispute of material fact on whether the NC-10 was “publicly known” and whether it was “on sale” before when Crown applied for the ‘425 patent, Crown’s motion for summary judgment on this issue is denied.
On-sale bar
Belvac contends that all four asserted patents are invalid because Crown allegedly offered to sell the CMB 3400 in the United States more than one year before the earliest priority date of the patents. In order to constitute an “offer” for the purposes of the on-sale bar clause, Crown’s “offer” must have created the power of acceptance in the recipient. Here, Crown’s quotation did not allow the recipient to create a binding contract by acceptance—it was an invitation to make an offer, not an offer in itself. Crown’s motion for summary judgment on the on-sale bar clause granted and Belvac’s motion on the same issue denied.
Written description
Belvac argues that Crown’s written description of the patents is too indefinite to render the patents valid. This is a jury issue. Belvac has not offered any authority that the court may grant summary judgment on the written description requirement solely because Crown’s specifications do not describe the precise process in question. The standard is whether the description “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date,” and it is possible to meet that standard even where the patent does not describe the claimed process in detail.
Lost profits
Belvac moves for summary judgment on lost profits, arguing that Crown’s request for lost profits “should be rejected as a matter of law because Crown has admitted that it did not have the manufacturing capability to make the sales Belvac made.” Because the question of Crown’s manufacturing capability is disputed, summary judgment is denied.
Crown Packaging Technology Inc. v. Belvac Production Machinery Inc., Case No. 6:18-cv-70, March 17, 2022. WDVA at Lynchburg (Moon). VLW 022-3-132. 36 pp.
Editor’s note: A version of this digest that appeared in the April 4, 2022, issue misidentified the case as VLW No. 022-3-133.
