Plastipak Packaging, Inc. v. Premium Waters, Inc.
21-2244, Document 49 (Fed. Cir. Dec. 19, 2022) (2022)
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Rule of Law:
Summary judgment of patent invalidity due to nonjoinder of an inventor is improper if there are genuine disputes of material fact regarding the alleged co-inventor's specific contributions to the claimed invention, particularly whether those contributions were novel or merely constituted prior art.
Facts:
- Plastipak Packaging, Inc. owns twelve patents related to lightweight plastic containers and preforms with specific neck portion features, with Richard C. Darr and Edward V. Morgan listed as inventors.
- The patents are divided into two groups: seven claiming a neck portion with an "X Dimension Limitation" (0.580 inches or less from dispensing opening to lower surface of support flange) and five claiming a "Discontinuous TEF Limitation" (a discontinuous tamper-evident formation).
- Alessandro Falzoni, an employee of SACMI Imola, collaborated with Darr and other Plastipak personnel over several months in 2005 and 2006 on SACMI’s “Multi-Lok 27” (ML27) project, which involved a neck portion design, a specialty closure, and a discontinuous TEF.
- On June 13, 2005, Falzoni emailed Darr a 3D model of a "neck finish," stating the area below the neck support ring was undefined and changeable.
- The same day, Darr responded to Falzoni with a design that included a lower surface of a support flange and a 0.591-inch X Dimension, which Falzoni stated looked "right."
- An internal SACMI presentation in November 2005, not shared with Plastipak at the time, touted a shorter neck portion with an X Dimension of approximately 0.5787 inches.
- Discussions between Plastipak and SACMI regarding obtaining exclusive rights to SACMI’s ML27 design broke down in early 2006.
- In March 2006, Darr and Morgan filed the patent application that eventually resulted in Plastipak’s twelve patents-in-suit.
Procedural Posture:
- Plastipak Packaging, Inc. sued Premium Waters, Inc. in the United States District Court for the Western District of Wisconsin, alleging infringement of various claims of its twelve patents.
- Premium Waters, Inc. moved for summary judgment of invalidity, asserting that the patents were invalid under pre-AIA 35 U.S.C. § 102(f) for failing to include Alessandro Falzoni as a joint inventor.
- The District Court granted Premium Waters, Inc.'s motion for summary judgment, finding that Falzoni was a joint inventor and that the patents were invalid for nonjoinder, and subsequently entered final judgment in favor of Premium Waters, Inc.
- Plastipak Packaging, Inc. (Plaintiff-Appellant) appealed the District Court's grant of summary judgment to the United States Court of Appeals for the Federal Circuit.
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Issue:
Does a district court properly grant summary judgment of patent invalidity for nonjoinder of an inventor under pre-AIA 35 U.S.C. § 102(f) when there are genuine disputes of material fact regarding the alleged co-inventor's contribution to the claimed X Dimension Limitation and Discontinuous TEF Limitation?
Opinions:
Majority - stark
No, the district court did not properly grant summary judgment of patent invalidity for nonjoinder of an inventor because genuine disputes of material fact exist regarding the alleged co-inventor’s contributions to the claimed invention. The court reviews grants of summary judgment de novo, construing all facts and inferences in favor of the nonmoving party. To invalidate a patent at summary judgment, the movant must present clear and convincing evidence such that no reasonable jury could find otherwise. For the X Dimension Patents, a reasonable factfinder could reject Falzoni’s purported contribution because his 3D model did not explicitly depict a lower surface of a support flange, his testimony regarding its X Dimension was uncertain, and Plastipak provided evidence of independent conception by Morgan. For the Discontinuous TEF Patents, a genuine dispute exists as to whether Falzoni contributed anything beyond the state of the art, as a contribution of information already in the prior art cannot establish joint inventorship. The district court's skepticism of Plastipak's conduct during discovery does not justify resolving material fact disputes at summary judgment, as weighing evidence is a task for the factfinder.
Analysis:
This case emphasizes the stringent standard for granting summary judgment in patent invalidity cases, particularly those involving inventorship disputes. It reinforces that merely presenting substantial evidence favoring one party is insufficient to warrant summary judgment if the non-moving party offers conflicting evidence that creates a genuine dispute of material fact. The ruling highlights the critical distinction between a significant contribution to the conception of an invention and merely providing information already known in the prior art, thereby setting a high bar for challengers to prove nonjoinder of an inventor without a full trial. This decision ensures that complex factual questions related to inventorship are properly resolved by a jury, or factfinder, rather than through summary disposition.
