CSP TECHNOLOGIES, INC. v. SUD-CHEMIE AG et al

Filing 169

ENTRY ON DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT - 107 Motion for Summary Judgment of Noninfringement is GRANTED. See Entry for details. Signed by Judge Richard L. Young on 2/6/2014. (LBT)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
NEW ALBANY DIVISION

CSP TECHNOLOGIES, INC.,
Plaintiff,
vs.
SÜD-CHEMIE AG,
SÜD-CHEMIE, INC.,
AIRSEC S.A.S.,
CLARIANT PRODUKTE
DEUTSCHLAND GMBH,
CLARIANT CORPORATION, and
CLARIANT PRODUCTION (FRANCE)
S.A.S.
Defendants.

)
)
)
)
)
)
)
)
)
)
)
)
)
)
)
)

4:11-cv-00029-RLY-WGH

ENTRY ON DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT OF
NONINFRINGEMENT
CSP Technologies, Inc. (“CSP”) is a leading innovator in the field of plastic
packaging, and is the owner of United States Patent No. 7,537,137, entitled “Resealable
Moisture Tight Container Assembly For Strips And The Like Having A Lip Snap Seal”
(the “‘137 patent”). As the title of the patent suggests, 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. Defendants, Süd Chemie AG, Süd Chemie, Inc., and Airsec S.A.S., Clariant
Produkte Deutschland GmbH, Clariant Corporation, and Clariant Production (France)

1

S.A.S.1, are competitors of CSP in this field, and are the owners of the Accused Products,
the Handy Active Tubes®. The Accused Products are described by the parties as vialshaped containers. CSP alleges that the Defendants are infringing claims 1-5 and claim 7
of the ‘137 patent by, inter alia, manufacturing, selling and/or importing the Accused
Products into the United States, either literally or under the doctrine of equivalents.
Defendants now move for summary judgment of noninfringement. For the reasons set
forth below, that motion is GRANTED.
I.

Background
The court’s infringement analysis involves two steps: claim construction of the

asserted claim(s) and a determination of whether the accused method or process infringes
the asserted claim(s). Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1581-82 (Fed.
Cir. 1996). “Direct infringement requires proof by preponderant evidence that the
defendant performs (if a method claim) or uses (if a product claim) each element of a
claim, either literally or under the doctrine of equivalents.” Cheese Sys., Inc. v. Tetra Pak
Cheese and Powder Sys., Inc., 725 F.3d 1341, 1348 (Fed. Cir. 2013). The first step,
claim construction, is an issue of law. Markman v. Westview Instruments, Inc., 517 U.S.
370, 384-85 (1996). The second step, comparing the properly construed claims to the
allegedly infringing device, is an issue of fact. Id.
Independent claims 1 and 7 contain virtually identical claim language, and recite,
in pertinent part:
1

Due to corporate restructuring, the court recently granted CSP leave to amend the
Complaint to include the following Defendants, Clariant Produkte Deutschland GmbH, Clariant
Corporation, and Clariant Production (France) S.A.S.

2

1.

A substantially moisture tight container and lid assembly for storing and
packaging moisture-sensitive items comprising: an assembly with a
container and a lid,
a)

the lid is attached by a hinge to an upper housing portion of
the container, the lid has an outer periphery that extends over
at least a portion of the container, the lid is provided with a
skirt that extends downwardly therefrom,

b)

the container has a container base, and a sidewall extending
upwardly from the container base,
i)

a top of the container is provided with an opening that
permits access to an interior of the container, wherein
the opening is spaced away from an outer surface of
the sidewall of the container. . .

ii)

the opening of the top of the container is bounded by a
lip that extends upward from the top of the container,
the lip of the top of the container extends around the
periphery of the opening of the top of the container,

iii)

the skirt of the lid is positioned at a location on the lid
that allows the skirt of the lid to enter into a closing
relationship with the lip of the top of the container, . . .

iv)

the lid further includes a flexible lip seal member that
extends downwardly therefrom, the flexible lip seal
member of the lid is configured to abut at least a
portion of the interior side of the lip of the top
container surface when the lid is in the closed position,
wherein the flexible lip seal member is designed to be
sufficiently deflective so as to provide a sealing
position, . . . which in combination with the closing
relationship between the skirt of the lid and the lip of
the top of the container results in a substantially
moisture tight seal between the lid and the container
....

Claims 2, 3, 4, and 5 are dependent claims of independent claim 1. A dependent claim is
“construed to incorporate by reference all the limitations of the claim to which it refers.”
3

35 U.S.C. § 112 (d). For example, dependent claims 2-4 require “[t]he substantially
moisture tight container and lid assembly of claim 1,” and dependent claim 5 requires
“[t]he substantially moisture tight container and lid assembly for storing and packaging
moisture-sensitive items of claim 1.”
Defendants filed the present motion for summary judgment on the same day they
filed their brief on claim construction regarding the meaning of four disputed claim
terms, shown in italics above: (1) “an opening wherein the opening is spaced away from
an outer surface of the sidewall of the container”; (2) “a closing relationship”; (3) “an
upper housing portion of the container” and (4) “substantially moisture tight.”
Defendants argued that, based upon their interpretation of those disputed claim terms,
Defendants’ accused products do not infringe claims 1-5 and 7 of the ‘137 patent either
literally or under the doctrine of equivalents.
After the Defendants’ motion for summary judgment was fully briefed, the court
issued its Entry on Claim Construction. The court agreed with CSP’s construction with
respect to three of the four disputed claim terms: (1) “an opening wherein the opening is
spaced away from an outer surface of the sidewall of the container”; (2) “a closing
relationship”; and (3) “substantially moisture tight.” The court did not agree with CSP’s
construction of the term “an upper housing portion of the container,” and construed it as
“an upper housing portion of the container that is separate and distinct from the container
base” – the construction advocated by Defendants. With this background in mind, the
court now turns to the merits of the present motion.

4

II.

Discussion
Defendants’ move for summary judgment of noninfringement either literally or

under the doctrine of equivalents.
“Literal infringement of a claim exists when every limitation recited in the claim
is found in the accused device, i.e., when the properly construed claim reads on the
accused device exactly.” Strattec Sec. Corp. v. Gen. Auto. Specialty Co., Inc., 126 F.3d
1411, 1418 (Fed. Cir. 1997) (citing Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed.
Cir. 1989)). Defendants’ Handy Active Tubes® consist of a container with a flip-top lid
and a built-in dessicant to sustain a moisture-free environment. CSP understands that
Defendants’ accused product does not have “an upper housing portion that is separate and
distinct from the container base.” Accordingly, CSP concedes that, pursuant to the
court’s claim construction, Defendants’ accused product does not literally infringe the
‘137 patent.
Infringement under the doctrine of equivalents is evaluated under an element-byelement basis, such that every claimed element of the invention, or its equivalent, is
present in the accused product. Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356
(Fed. Cir. 2012) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17,
40 (1997)). Defendants argue the doctrine of equivalents does not apply to the parties’
dispute for three principle reasons. First, they argue CSP failed to put forth any evidence
of infringement under that theory in response to Defendants’ original motion for
summary judgment. Second, they argue CSP cannot pursue infringement under the
doctrine of equivalents because CSP dedicated a one-piece container to the public in the
5

‘137 patent’s written description, but did not claim it. Lastly, they argue that application
of the doctrine of equivalents would “vitiate” the requirement that the upper housing
portion be “separate and distinct” from the container base. The court will discuss each
argument, in turn, below.
A.

CSP’s Original Response to Defendants’ Motion

As noted above, Defendants filed their motions for summary judgment before the
court’s Entry on Claim Construction. In response to Defendants’ motion for summary
judgment, CSP argued that, under its proposed claim constructions as supported by its
expert in the field of plastics technology and polymer processing, Dr. Tim Osswald,
Defendants’ accused products literally infringed the ‘137 patent, and that “a
determination of infringement under the doctrine of equivalents would be premature at
this time.” CSP reserved the right, however, to supplement Dr. Osswald’s expert report if
the court were to reject its proposed constructions. Following the court’s Entry on Claim
Construction, CSP requested, and the Magistrate Judge granted CSP the opportunity to
file a supplemental brief in response to Defendants’ motion for summary judgment
pursuant to the parties’ Case Management Plan. (See Docket # 56, at 8, § III.P (“If
required by the Court’s Markman decision, parties can request that supplemental nondamages expert reports and/or additional summary judgment motion practice be added to
the CMP.”)). CSP did so, and the Defendants filed a response to that supplemental brief.
On this record, the court finds CSP did not fail to respond or to submit evidence of
infringement under an equivalents theory in a timely fashion.
B.

Disclosure-Dedication Rule
6

The disclosure-dedication doctrine bars infringement under the doctrine of
equivalents when “particular subject matter [has been] disclosed in the patent
specification but not claimed . . . .” K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1368
(Fed. Cir. 1999). In such situations, the unclaimed subject matter is “deemed to have
been surrendered [to the public].” Id.; see also Johnson & Johnston Assocs. v. R.E. Serv.,
285 F.3d 1046, 1054 (Fed. Cir. 2002) (“When a patent drafter discloses but declines to
claim subject matter, as in this case, this action dedicates that unclaimed subject matter to
the public.”). To allow “[a]pplication of the doctrine of equivalents to recapture subject
matter deliberately left unclaimed would ‘conflict with the primacy of the claims in
defining the scope of the patentee’s exclusive right.’” Johnson & Johnston Assocs., 285
F.3d at 1054 (quoting Sage Prods. Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1422 (Fed.
Cir. 1997)); see also Conopco, Inc. v. May Dep’t Stores, Co., 46 F.3d 1556, 1562 (Fed.
Cir. 1994) (“The doctrine of equivalents cannot be used to erase ‘meaningful structural
and functional limitations of the claim on which the public is entitled to rely in avoiding
infringement.’”) (citations omitted)).
The disclosure-dedication rule “is not without restriction.” Sandisk Corp. v.
Kingston Tech. Co., Inc., 695 F.3d 1348, 1363 (Fed. Cir. 2012). The disclosure must be
more than a generic reference in a written specification; instead, “‘the disclosure must be
of such specificity that one of ordinary skill in the art could identify the subject matter
that had been disclosed but not claimed.’” Id. (quoting PSC Computer Prods. v. Foxconn
Int’l, Inc., 355 F.3d 1353, 1360 (Fed. Cir. 2004)). Further, “‘before unclaimed subject
matter is deemed to have been dedicated to the public, the unclaimed subject matter must
7

have been identified by the patentee as an alternative to a claim limitation.’” Id. at 1364
(quoting Pfizer, Inc. v. Teva Pharm. USA, Inc., 429 F.3d 1364, 1379 (Fed. Cir. 2005)).
Whether this rule prevents a patentee from pursuing application of the doctrine of
equivalents is an issue of law. Id.
Here, Defendants argue CSP disclosed one-piece containers in the ‘137 patent’s
written description, but failed to claim one-piece containers. The court’s construction of
independent claims 1 and 7 – i.e., that the upper housing portion of the container must be
separate and distinct from the container base – supports CSP’s argument that CSP
claimed only two-piece containers.
The ‘137 patent written description discloses both one-piece and two-piece
containers, as illustrated in Figures 6-9 and 12 (two-piece containers) and Figure 10 (onepiece container). Both one- and two-piece containers are also disclosed in the detailed
description of the ‘137 patent. (See ‘137 patent, col. 4, ll:4-6 (“In one embodiment, the
container can be formed as a single closed unit, with the hinge joining the lid portion to
the container portion.”; id., col. 4 ll:42-44 (“In a further embodiment, the lid and
container can be formed in a single piece (for example, joined at the hinge). . . .”); id.,
col. 4, ll:7-9) (“In yet another embodiment, the container assembly comprising the base
and upper housing portion can be molded separately.”); id., col. 4, ll:47-48 (“An
embodiment depicting a two-part assembly is illustrated in FIGS. 6 to 9 and 12.”)).
Indeed, CSP’s own expert, Dr. Osswald, stated in his Supplemental Expert Report that
“the ‘137 patent discloses embodiments where the container base and upper housing are
two pieces (see, e.g., Figure 6) and embodiments where the container base and upper
8

housing portion are one piece (see, e.g., Figure 10).” (Supplemental Expert Report of Dr.
Tim A. Osswald (“Osswald Supp. Report”) ¶ 26). There is thus no dispute that one of
ordinary skill in the art would have understood that the ‘137 patent specifically discloses
both one- and two-piece containers. Yet, as noted above, CSP claimed only two-piece
containers.
The court’s understanding of the ‘137 patent is supported by the claims in United
States Patent No. 8,528,778 (the “‘778 patent”), which is a continuation-in-part of the
‘137 patent. Both patents claim a container and lid assembly, but only the ‘137 patent
claims “the lid is attached by a hinge to an upper housing portion of the container.” (‘137
patent, col. 6, claim 1(a)). In simple terms, the ‘137 patent claims two-piece containers,
and the ‘778 patent literally claims “wherein the container is a single piece container.”
(See U.S. Patent No. 8,528,778, col. 8, claim 6). Because CSP specifically disclosed
one-piece containers in the ‘137 patent’s written description, but did not claim one-piece
containers, CSP is barred under the disclosure-dedication rule from using the doctrine of
equivalents to reclaim one-piece containers such as Defendants’ Handy Active Tubes®.
C.

Claim Vitiation

The Federal Circuit recently explained that “‘[v]itiation’ is not an exception to the
doctrine of equivalents, but instead a legal determination that ‘the evidence is such that
no reasonable jury could determine two elements to be equivalent.’” Deere, 703 F.3d at
1356 (quoting Warner-Jenkinson, 520 U.S. at 39 n.8). Accordingly, the “proper inquiry”
is to apply the doctrine of equivalents, asking “whether an asserted equivalent represents
an ‘insubstantial difference’ from the claimed element, or ‘whether the substitute element
9

matches the function, way, and result of the claimed element.’” Id. (quoting WarnerJenkinson, 520 U.S. at 40); see also Brilliant Inst., Inc. v. GuideTech, LLC, 707 F.3d
1342, 1347 (7th Cir. 2013) (“[V]itiation applies when one of skill in the art would
understand that the literal and substitute limitations are not interchangeable, not
insubstantially different, and when they do not perform substantially the same function in
substantially the same way, to accomplish substantially the same result.”). “If no
reasonable jury could find equivalence, then the court must grant summary judgment of
no infringement under the doctrine of equivalents.” Deere, 703 F.3d at 1356. (citing
Warner-Jenkinson, 520 U.S. at 39 n. 8). Whether an omitted element is supplied by an
equivalent device or structure is ordinarily an issue of fact. Id.
The doctrine of claim vitiation has its clearest application where the accused
device contains the polar opposite or antithesis of the claimed structure. Brilliant Inst.,
707 F.3d at 1347 (citing Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338 , 1345
(Fed. Cir. 2006)). This makes sense, as elements that are the opposite of one another are
likely not insubstantially different. Id. For example, the Federal Circuit concluded that a
competitor’s bingo game did not infringe the plaintiff’s patents claiming alternative
methods of playing bingo either literally or under the doctrine of equivalents because the
accused version determined a winning combination after the game started, whereas the
patented gaming device determined a winning combination before the game started.
Planet Bingo, 472 F.3d at 1345; see also Wleklinski v. Targus, Inc., 258 Fed. Appx. 325,
329-30 (Fed. Cir. 2007) (refusing to apply the doctrine where the proposed application
would change “separate sections made of different materials” to “a single unitary material
10

made of the same fabric”); Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed.
Cir. 2005) (refusing to apply the doctrine where the proposed application would change
“mounted” to “unmounted”); Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d
1091, 1106 (Fed. Cir. 2000) (refusing to apply the doctrine where the proposed
application would change “majority” to “minority”);
Here, Defendants argue the court should refuse to apply the doctrine of
equivalents because the accused unitary vial-shaped containers are the antithesis or polar
opposite of the two-piece containers claimed in the ‘137 patent. Thus, a finding of
infringement under the doctrine of equivalents would vitiate the ‘137 patent’s
requirement that the container consist of (1) an upper housing portion that is separate and
distinct from (2) a container base.
In construing the term “upper housing portion of the container” as separate and
distinct from the container base, the court reasoned that the dictionary definition of the
word “housing” means something that “covers and protects” something else. Thus, in
this case, the “upper housing portion of the container” “covers and protects” the contents
in the container. The court also analyzed the context of the claim, and noted that subparts
1(a) and (b) of independent claim 1 (and by extension, dependent claims 2-5, and claim
7) describe the container as having a lid, a hinge, an upper housing portion, a container
base with sidewalls extending upward, and a container top (meaning an opening at the
top). Finally, the court noted that each time the specification uses the term “upper
housing” to describe the container, the specification describes the container as having an
upper housing and a separate and distinct container base. By contrast, the Accused
11

Product does not ha an uppe housing portion; inst
ave
er
p
tead, it has a lid, a hinge, a contai
iner
base wit sidewalls extending upward, an a contain top.
th
s
nd
ner
rt,
In Dr. Ossw
I
wald’s Supp
plemental Ex
xpert Repor he opine that the c
es
court’s
construc
ction of “an opening wherein the opening is s
w
o
spaced awa from the outer surfa of
ay
ace
the sidew of the container” meant that the court “r
wall
c
m
rejected the Defendant argumen
e
ts’
nt
that the claims can not read on vial shaped container
n
rs.” (Osswa Supp. R
ald
Report ¶ 20)
).
He then opines that the integra upper hou
t
al
using portio of the ac
on
ccused prod is
duct
insubsta
antially diffe
erent from an upper ho
a
ousing porti that is s
ion
separate from the conta
m
ainer
base. His suppleme
ental affida includes a visual de
avit
s
epiction of two vial-sh
haped
containe whose sh
ers
hape and di
imensions are exactly t same. (
a
the
(See below) One
).
represen an embo
nts
odiment (Fig
gure 10) fro the ‘137 patent, and the other represents t
om
7
d
the
Accused Product. According to Dr. Ossw
d
A
t
wald, the int
tegral “upp housing portion” of the
per
f
Accused Product is simply the top portion of the con
d
s
e
n
ntainer. (Se Osswald Supp. Repo
ee
ort.
¶ 23 (“T Accused Product’s upper hous
The
d
sing portion and conta
n
ainer base ar made
re
together as one piec
r
ce.”)).

12

Dr. Osswald’s representation of the top portion of the accused product blends the
“upper housing portion” of the container with the upper limit of the sidewalls. Dr.
Osswald’s representation thus fails to account for the fact that the “upper housing portion
of the container” is meant to be a separate and distinct part of the container that covers
and protects the container’s contents. Merely pointing out the top of the sidewalls as the
“upper housing portion” reads that limitation (that the “upper housing portion” be
separate and distinct) out of the patent. The court finds a one-piece container is not the
equivalent of a two-piece container, and to find otherwise would entirely vitiate that
claim element. No reasonable jury would find otherwise.
III.

Conclusion
For the reasons set forth above, the court finds CSP is barred from asserting the

doctrine of equivalents in this case on two independent bases: (1) the disclosurededication rule and (2) the claim vitiation doctrine. Accordingly, the court hereby
GRANTS Defendants’ Motion for Summary Judgment of Noninfringement (Docket #
107).
SO ORDERED this 6th day of February 2014.

s/ __________________________________
Richard L. Young_________________
United StatesL. YOUNG, CHIEF JUDGE
RICHARD District Court
SouthernStates District Court
United District of Indiana
Southern District of Indiana

Distributed Electronically to Registered Counsel of Record.

13