Crown’s Case Closed: Claims Can’t Cover Cans

Posted on | May 14, 2008 | 2 Comments

2008-1340/2008-1284 Crown Pkg Tech. v. Rexam Beverage
D/DE 05-cv-0608

Both parties appeal from parts of Mag. Judge Mary Pat Thynge’s orders finding Crown’s asserted patent claims invalid and not infringed by Rexam, and certain of Rexam’s asserted claims limited under § 287.  Delaware IP covered this case in several posts.

The parties are competitors in the manufacture of beverage cans.  Crown commenced the action accusing Rexam of infringing 6,848,875 and 6,935,826–Rexam asserted typical defenses and counterclaimed, alleging in part that Crown infringed several patents including 4,774,839.  Judge Thynge issued a series of rulings, including several on summary judgment addressing marking, infringement and validity.  Before the remaining issues could be tried, the parties entered into a confidential settlement and Rexam’s counterclaims on its remaining patents were dismissed with prejudice.

Laches and Marking.  Rexam licensed a third-party, Belvac, to make and sell can forming machines for a period during the mid-1990s.  These machines were not marked, nor was Belvac required to mark.  Crown purchased some Belvac machine during this time. 

Rexam admitted that it (or Belvac) did not mark, but argued that it did not have to because it was asserting only method claims..  However, the court noted that the asserted patents contained both method and apparatus claims, and therefore marking was required.  Patents that contain only method claims can avoid the marking requirement.  The court also found that a letter sent by Belvac to its customers was not sufficiently specific to constitute actual notice under § 287(a).  Because the ’839 expired right before the counterclaims were filed, the court entered summary judgment for Crown on the ’839 and ruled that Rexam could not collect pre-lawsuit damages as to the other, asserted patents.

As for laches, while the court noted the long delay in filing the suit, enough factual issues remained as to when Rexam should have known of its claims and its reasons for delay to preclude summary judgment.

Invalidity.  The court held the asserted claim of the ’875 patent invalid as failing to comply with the written description requirement, § 112(1).  Reviewing the patent and inventors’ testimony, the court found that the invention required an "annular reinforcing bead" where the can attached to the can end.  However, the asserted claim was broader, not requiring such a bead.  In other words, the ’875 inventors did not possess an invention that did not include an "annular reinforcing bead."  The court distinguished cases cited by Crown as involving "subcombination" claims directed at only one aspect or combination of invention rather than claims directed at the entire invention.  In light of its ruling, the court declined to rule on the other invalidity theories.

Non-infringement.  The court held that Rexam did not infringe the asserted claim of the ’826 patent–specifically, it lacked an "annular reinforcing bead."  This claim term was construed to mean "an outwardly concave generally ‘U’ shaped groove…that is located inwards from the bottom of the wall … which encircles and supports the center panel of the can end."  Unfortunately, Sealed Exhibits prevent us from showing you a picture, but the court found that Rexam did not have this groove. 

The court also rejected Crown’s doctrine of equivalents argument.  The ’826 stated that the annular reinforcing bead served 3 functions–strength, support, and an opening for a "seaming chuck."  Crown argued that Rexam’s product performed the strength function, but did not discuss the others.  Accordingly, the court found that Crown failed to establish a genuine issue of material fact on this theory.

Documents:

2008-1340_Marking_Opinion.pdf

2008-1340_Opinion_on_SJ.pdf

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