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Poly-America, L.P. v. API Industries, Inc.

United States District Court, D. Delaware

November 25, 2014

POLY-AMERICA, L.P., Plaintiff,

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Brian Farnan, Esquire of Farnan, LLP, Wilmington, Delaware. Counsel for Plaintiffs. Of Erica W. Harris, Esquire and LeElle Krompass, Esquire of Susman Godfrey LLP.

Jack B. Blumenfeld, Esquire and Michael J. Flynn, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, Delaware. Counsel for Defendants. Of William Thomashower, Esquire and Carla Sereny, Esquire of Schwartz & Thomashower.

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ROBINSON, District Judge.


On April 17, 2013, plaintiff Poly-America, L.P. (" Poly" ) instituted suit against defendant API Industries, Inc. (" API" ), asserting infringement of U.S. Patent No. D569, 719 S (" the '719 patent" ). The '719 patent, titled " Product Container," issued May 27, 2008. The '719 patent contains a single design claim[1] based on 10 drawings showing different views of a six-sided folding cardboard box with a front opening. API moved for judgment on the pleadings based on its assertion that its cardboard

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box design is " not substantially similar" to the patented design. On April 10, 2014, the court issued a memorandum and corresponding order denying API's motion for judgment on the pleadings. (D.I. 78; D.I. 79) The court also denied API's subsequent motion for reconsideration of the order denying judgment on the pleadings. (D.I. 104)

Presently before the court are Poly's motion for summary judgment (D.I. 105); API's motion for summary judgment of non-infringement (D.I. 106); and API's motion for summary judgment of invalidity (D.I. 107). Additionally, Poly has filed a motion to exclude certain opinions of API's proposed expert. (D.I. 118) The court has jurisdiction pursuant to 28 U.S.C. § § 1331 and 1338(a).


Poly is a limited partnership organized and existing under the laws of the State of Texas. API is a corporation organized and existing under the laws of the State of New Jersey, having its principal place of business in Orangeburg, New York. Poly and API are competitors in the manufacture and sale of household plastic bags, sold in cardboard containers at retailers such as The Home Depot, Inc. (" Home Depot" ).

Prior to 2012, both Poly and API sold trash bag products for Home Depot under the Husky® and UltraSac® brands, respectively. (D.I. 108 at 5; D.I. 121 at 2) In 2012, Home Depot invited API and Poly to bid on Home Depot's house brand " HDX" business. ( Id.) Home Depot selected both API and Poly to supply trash bag products in various sizes and box counts for the HDX brand. ( Id.) Poly was selected as the " lead" product, and Home Depot communicated with API regarding a redesign of API's products, which ultimately lead to the production of the accused products. (D.I. 121 at 3)


A. Summary Judgment

" The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n.10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be--or, alternatively, is--genuinely disputed must support the assertion either by citing to " particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials," or by " showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact." Fed.R.Civ.P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then " come forward with specific facts showing that there is a genuine issue for trial." Matsushita, 475 U.S. at 587 (internal quotation marks omitted). The court will " draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

To defeat a motion for summary judgment, the non-moving party must " do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita, 475 U.S. at 586-87; see also Podohnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir. 2005)

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(stating party opposing summary judgment " must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue" ) (internal quotation marks omitted). Although the " mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment," a factual dispute is genuine where " the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). " If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Id. at 249-50 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated " against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial" ).

B. Infringement

A patent is infringed when a person " without authority makes, uses or sells any patented invention, within the United States . . . during the term of the patent." 35 U.S.C. § 271(a). A patent holder has the burden of proving infringement by a preponderance of the evidence. Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1187 (Fed. Cir. 1988). The legal standard for patent design infringement is set forth in the Federal Circuit's opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), as follows:

In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear " substantially the same" to the ordinary observer, as required by Gorham [Co. v. White, 81 U.S. 511, S.Ct. , 20 L.Ed. 731 (1871)]. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art....

543 F.3d at 678. In further illuminating the above standard, the Federal Circuit has held that: (a) " articles which are concealed or obscure[d] in normal use[2] are not proper subjects for design patents, since their appearance cannot be a matter of concern," Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1379 (Fed. Cir. 2002) (citations omitted); and (b) where a design contains both ornamental and functional features, it is proper " to separat[e] the functional and ornamental aspects" because the scope of the design claim " must be construed in order to identify the non-functional aspects of the design as shown in the patent," Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010).

C. Invalidity

1. Functionality

Design patents protect " a new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171. " An article of manufacture necessarily serves a utilitarian purpose, and the design

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of a useful article is deemed to be functional when the appearance of the claimed design is dictated by the use or purpose of the article." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (citation omitted). " [T]he determination of whether the patented design is dictated by the function of the article of manufacture must ultimately rest on an analysis of its overall appearance." Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1455 (Fed. Cir. 1997). Additionally, " a design patent is not invalid if the functional aspect could be accomplished in ways other than by the patented design." Motorola, Inc. v. Alexander Mfg. Co., 786 F.Supp. 808, 812 (N.D. Iowa 1991). An accused infringer may raise the affirmative defense of ...

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