IP Law Daily Reusable container maker’s infringement by equivalents claims barred
Tuesday, March 22, 2016

Reusable container maker’s infringement by equivalents claims barred

By Linda O’Brien, J.D., LL.M.

A plastic packaging manufacturer’s claims of infringement by equivalents against several competing manufacturers were barred by the disclosure-dedication doctrine, the U.S. Court of Appeals for the Federal Circuit has decided. Thus, the district court’s grant of summary judgment in favor of the defendants was affirmed (CSP Technologies, Inc. v. Süd-Chemie AG, March 22, 2016, Chen, R.).

Plastic packaging manufacturer CSP Technologies, Inc. is the owner of U. S. Patent No. 7,537,137 (“the ’137 patent”), entitled “Resealable Moisture Tight Container Assembly For Strips And The Like Having A Lip Snap Seal.” The patent relates to substantially moisture-tight container and lid assemblies that can be used to store and package moisture-sensitive items, such as diagnostic test strips, using dessicant entrained polymer technology. Süd Chemie, Inc., its parent company, Clariant Corporation, and Airsec S.A.S. are competitors of CSP in this field, and manufacture, sell, and/or import a one-piece container called Handy Active Tubes®.

The district court construed the claim term “an upper housing portion of the container” in Süd Chemie’s favor and granted summary judgment of noninfringement by equivalents to Süd Chemie. CSP appealed.

Claim construction. The district court properly construed that the term “upper housing portion” referred to a separate, detachable piece found only in a two-piece embodiment. CSP’s contention that the ordinary-meaning of the term referred to the top portion of the container, whether or not it was separable, and the claims would encompass both one-piece and two-piece containers was rejected. According to the appellate court, the patentee’s repeated and consistent use of the term to describe a separable part of a two-piece container implicitly defined the term to limit it to the two-piece embodiment.

Noninfringement by equivalents. Further, the district court did not err in finding that CSP’s assertion of infringement was barred by the disclosure-dedication doctrine. The appellate court noted that the patent specifications disclosed two embodiments of CSP’s invention: the two-piece container with a separable upper housing portion and the one-piece container without a separable upper housing portion. However, all asserted claims were directed to the embodiment with the separable upper housing portion.

Moreover, a later-filed continuation application that resulted in a patent did not contain the “upper housing portion” claim limitation. The existence of the continuation application supported the conclusion that the patentee viewed the two embodiments—a one-piece design with a hinge joining the lid to the container and a two-piece design comprising of a base and upper housing portion molded separately—as alternatives. Since the disclosure-dedication doctrine barred CSP from asserting that the disclosed one-piece embodiment fell within the scope of the asserted claims, CSP could not succeed in its claim of infringement by equivalents, the appellate court concluded.

The case is No. 2015-1124.

Attorneys: James Richard Nuttal (Steptoe & Johnson, LLP) for CSP Technologies, Inc. Sean Michael Sullivan (Lee Sullivan Shea & Smith LLP) for Süd Chemie AG, Süd Chemie, Inc., Airsec S.A.S., Clariant Produkte Deutschland GmbH, Clariant Corporation, and Clariant Production S.A.S.

Companies: CSP Technologies, Inc.; Süd Chemie AG; Süd Chemie, Inc.; Airsec S.A.S.; Clariant Produkte Deutschland GmbH; Clariant Corporation; Clariant Production S.A.S.

MainStory: TopStory Patent FedCirNews

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