Crown Packaging v. Rexam Beverage Can (CAFC 2008-1284, -1340) precedential

Crown and Rexam are both in the business of selling can ends and bodies to fillers¹ associated with major beverage companies.

¹ Fillers are companies that fill cans with fluids such as soda or beer. Generally, beverage cans are sold to fillers in two parts, can bodies and can ends. The can bodies are the cylindrical-shaped portions that hold the beverages and the can ends are the can tops. Fillers first fill the can bodies with the desired beverage, and then seal the can ends to the can bodies. The method used to seal the can ends to the can bodies depends, in part, on the geometry of the can ends.

Crown came up with "Superend," using 10% less metal than a conventional can end. For decades, the technology race for beverage cans has been to minimize metal use. Rexam countered Crown with its Rexam End. So Crown sued over '826. Rexam counterclaimed '839.

Crown moved for partial summary judgment dismissing Rexam's counterclaim based on a failure to mark under 35 U.S.C. § 287(a). The district court issued an amended order on July 30, 2007 granting Crown's motion for summary judgment and dismissing Rexam's counterclaim. Following additional briefing and oral arguments, the district court issued a claim construction order on May 17, 2007. On January 22, 2008, the district court granted Rexam's motion for summary judgment of noninfringement, holding that no genuine issue of material fact existed as to whether the Rexam End infringes claim 14 of the '826 patent under the doctrine of equivalents.

Claim Construction

First, Crown's dismissed claim, which vectors to the doctrine of equivalents.

We review a district court's grant of summary judgment de novo. Hilgraeve Corp. v. McAfee Assocs., Inc., 224 F.3d 1349, 1352 (Fed. Cir. 2000). Summary judgment is proper only "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). Furthermore, a determination of noninfringement, either literal or under the doctrine of equivalents, is a question of fact. IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed. Cir. 2000). "Thus, on appeal from a grant of summary judgment of noninfringement, we must determine whether, after resolving reasonable factual inferences in favor of the patentee, the district court correctly concluded that no reasonable jury could find infringement." Id.

A finding of infringement under the doctrine of equivalents requires a showing that the difference between the claimed invention and the accused product was insubstantial. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950). One way of doing so is by showing on a limitation by limitation basis that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented product. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39-40 (1997). The function-way-result test is particularly suitable for analyzing the equivalence of mechanical devices, such as the ones at issue here. Id. at 39.

The disputed term was "annular reinforcing bead," which acts to create a secure seal. In the figure below, Crown's claimed bead is at left, while the arguably equivalent bead by Rexam is at right.

The parties put up expert witnesses, who both agreed that Rexam's bead performed the same function as Crown claimed, but Rexam said its fold did two more things, so was not equivalent. "Crown did not provide a detailed argument or present additional evidence in response to these newly alleged functions, but instead referenced its expert report" and argued "there was a genuine issue of material fact as to infringement by equivalents that precludes summary judgment."

The district court judge thought Crown's counter insufficient.

It is not the case that Crown failed to respond to an argument or even that it failed to respond with any evidence. While Crown could have made this clearer to the district court by addressing the issue squarely or restating [Crown's expert witness] Mr. Higham's analysis, its decision to refer to the evidence already before the court should not be fatal.

Because Crown provided evidence in support of its position that the annular reinforcing bead of claim 14 of the '826 patent had only one function, and because we must resolve any reasonable factual inferences in favor of the nonmoving party, we conclude that there is a material issue of fact regarding the function of the claimed bead. Accordingly, we reverse and remand the district court's grant of summary judgment of noninfringement.

Marking under 35 U.S.C. § 287(a)

Rexam cross-appeals the district court's grant of Crown's motion for summary judgment dismissing Rexam's counterclaim for infringement of the '839 patent due to Rexam's failure to mark. See Crown I. In particular, Rexam argues that failure to mark the "necking" machines sold by its licensee does not implicate § 287 because it is asserting only the method claims from the '839 patent, not the machine claims.

The marking statute, 35 U.S.C. § 287(a), requires that:
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

Accordingly, a party that does not mark a patented article is not entitled to damages for infringement prior to actual notice. Although Rexam asserted only the method claims of the '839 patent against Crown, the district court dismissed Rexam's counterclaim because the '839 patent also includes unasserted apparatus claims. The district court erred.

Case law distinguishes between apparatus claims and method claims for the marking statute, which is moot for method claims.

The law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method. Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581 (Fed. Cir. 1983). In Hanson, 718 F.2d at 1082-83, we held that 35 U.S.C. § 287(a) did not apply where the patentee only asserted the method claims of a patent which included both method and apparatus claims. Hanson is factually identical to this case, and we are therefore bound by the rule of Hanson.

In American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523 (Fed. Cir. 1993), we explained:

The purpose behind the marking statute is to encourage the patentee to give notice to the public of the patent. The reason that the marking statute does not apply to method claims is that, ordinarily, where the patent claims are directed to only a method or process there is nothing to mark. Where the patent contains both apparatus and method claims, however, to the extent that there is a tangible item to mark by which notice of the asserted method claims can be given, a party is obliged to do so if it intends to avail itself of the constructive notice provisions of section 287(a).

Id. at 1538-39. As the American Medical opinion goes on to explain:

In this case, both apparatus and method claims of the '765 patent were asserted and there was a physical device produced by the claimed method that was capable of being marked. Therefore, we conclude that AMS was required to mark its product pursuant to section 287(a) in order to recover damages under its method claims prior to actual or constructive notice being given to MEC.

Id. at 1539 (emphasis added). In this case and Hanson, the patentee only asserted method claims despite the fact that the patent contained both method and apparatus claims. In American Medical, in contrast, "both apparatus and method claims of the '765 patent were asserted." American Medical, 6 F.3d at 1523. Because Rexam asserted only the method claims of the '839 patent, the marking requirement of 35 U.S.C. § 287(a) does not apply. Consequently, we reverse the district court's grant of Crown's motion for summary judgment dismissing Rexam's counterclaim for infringement of the '839 patent.

Back to district court for trial, or settlement, if the parties want to get off their respective cans and get back to canning.

Reversed and remanded.