Prima TEK II, L.L.C. v. Polypap, S.A.R.L.

412 F.3d 1284, 75 U.S.P.Q. 2d (BNA) 1219, 2005 U.S. App. LEXIS 11925, 2005 WL 1459332
CourtCourt of Appeals for the Federal Circuit
DecidedJune 22, 2005
DocketNos. 04-1411, 04-1421
StatusPublished
Cited by17 cases

This text of 412 F.3d 1284 (Prima TEK II, L.L.C. v. Polypap, S.A.R.L.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Prima TEK II, L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 75 U.S.P.Q. 2d (BNA) 1219, 2005 U.S. App. LEXIS 11925, 2005 WL 1459332 (Fed. Cir. 2005).

Opinion

DYK, Circuit Judge.

Polypap, S.A.R.L., Philippe Charrin, and Andre Charrin (collectively “Polypap”) appeal from the judgment of the district court holding claim 15 of United States Patent No. 5,410,856 (the “’856 patent”) and claim 9 of United States Patent No. 5,615,532 (the “’532 patent”) not invalid and infringed by Polypap, and enjoining Polypap from further infringement by making, using, or selling the accused device, or instructing others in its use. Pri-ma Tek II, L.L.C. v. Polypap Sarl, 316 F.Supp.2d 693 (S.D.III.2004). Prima Tek II, L.L.C. and Southpac Trust International, Inc., as Trustee for the Family Trust U/T/A dated 12/8/95 (collectively “Prima Tek”) cross-appeal the judgment of the district court holding Polypap not liable for induced or contributory infringement of the asserted claims of the patents. We reverse because we find the asserted claims of the ’856 and ’532 patents invalid as anticipated, and dismiss the cross-appeal as moot.

BACKGROUND

I

Prima Tek and Polypap are competitors in the floral products market. Polypap is a French business that sells a product in the United States called the Bouquett’O (“the accused product”). The accused product is a semicircular piece of plastic that can be formed into a disposable device for holding floral arrangements. On March 29, 1999, Prima Tek filed suit against Polypap for infringement of, inter [1286]*1286alia, claim 15 of the ’856 patent and claim 9 of the ’532 patent. The district court granted summary judgment of non-infringement in favor of Polypap, which decision was appealed to this court. Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1145 (Fed.Cix.2003). We held that the district court had used an incorrect claim construction, vacated the decision, and remanded for further proceedings. Id. at 1154. We specifically held that the phrase “floral holding material having an upper end, a lower end and an outer peripheral surface, the floral holding material being constructed of a material capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means” must be given its ordinary meaning, and is not limited to floral foam or soil. Id. at 1149, 1152.

After a bench trial, the district court held the asserted claims of the patents not invalid and infringed by Polypap, and accordingly enjoined Polypap from making, using, or selling the accused product or instructing others in its use. The district court rejected Prima Tek’s claims that Po-lypap was liable for induced and contributory infringement. The district court also rejected Polypap’s claim that Prima Tek engaged in inequitable conduct in the prosecution of the patents. Polypap appeals and Prima Tek cross-appeals from the district court’s judgment of no induced or contributory infringement.

II

The asserted claims describe an assembly and method for displaying a floral grouping. They generally describe a floral grouping in which flower stems are inserted into floral foam, the foam wrapped in a sheet of material and tied near the top. Claim 15 of the ’856 patent includes limitations for, inter alia, a “floral holding material,” the absence of any “pot means,” and a “crimped portion in the sheet of material” having “at least one overlapping fold.”1 [1287]*1287Claim 9 of the ’532 patent includes limitations for, inter alia, “providing a floral holding material,” the absence of any “pot means,” and “disposing banding means about the sheet of material ... causing the banding means to press a portion of the sheet of material against the outer surface of the floral holding material.”2

This case presents the question of whether the asserted claims are invalid as anticipated. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

In considering questions of anticipation, we are mindful that if an invalid patent is issued, competitors may be deterred from challenging it by the substantial cost of litigation. Even if a successful challenge is brought, competition may be suppressed during the pendency of the litigation. The risk of antitrust liability or litigation sanctions may deter some from seeking to secure or enforce invalid patents, but our patent system depends primarily on the Patent and Trademark Office’s (“PTO’s”) care in screening out invalid patents during prosecution.

Anticipation is ultimately a question of fact, but also depends on proper claim construction&emdash;a legal issue. We review the district court’s claim construction without deference, and its factual determinations for clear error. Golden Blount, Inc. v. Robert H. Peterson Co., 365 F.3d 1054, 1058 (Fed.Cir.2004). Here, extensive prior art exists regarding products and methods for displaying floral groupings, and the district court considered pri- or art stretching back over a century. It appears likely that the asserted claims are anticipated by the 1899 Bertels reference, but for simplicity we address only the more recent Charrin reference, which the district court found to be “substantially identical” to the much earlier Bertels reference. 316 F.Supp.2d at 707. Under the appropriate standard, the Charrin prior art reference, which was before the examiner during prosecution of the ’532 patent, clearly anticipates the asserted claims of the patents in suit. The Charrin reference is a published French patent application naming Andre Charrin as the applicant and inventor. In one embodiment, flowers [1288]*1288are inserted into a mass of wetted moss about which a cover made of waterproof material is wrapped.3 The cover is tied at the top by way of a cord passing through holes in the cover, which is then tightened.

Prima Tek agrees that the Charrin reference anticipates but for three limitations: the “without any pot means” limitation, the alleged requirement that the floral holding material hold its shape, and the crimping limitation (found only in claim 15 of the ’856 patent).

We first consider the meaning of the claim term “pot means” in order to determine whether the “without any pot means” limitation was satisfied by the Charrin reference. We did not construe this claim language in our prior opinion. The district court defined the “[mjaterial capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means” limitation as “any material that can function as floral holding material which supports the floral grouping without a closed bottom receptacle such as a flower pot, vase, etc.” 316 F.Supp.2d at 698. Thus, the district court appears to have construed “pot means” as “a closed bottom receptacle such as a flower pot, vase, etc.” The parties did not contest this construction in their briefs, but at oral argument each proposed a different construction. Polypap urged a broader construction of “a shell-like structure that supports a grouping of flowers.” Prima Tek urged an even broader construction of “a container, or anything that serves like a container, to hold the floral holding material in place.” The specifications do not define pot means other than to give the. example of a flower pot. ’856 patent, col. 3, II.

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Prima Tek Ii, l.l.c. v. Polypap, Et At.
412 F.3d 1284 (Federal Circuit, 2005)

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412 F.3d 1284, 75 U.S.P.Q. 2d (BNA) 1219, 2005 U.S. App. LEXIS 11925, 2005 WL 1459332, Counsel Stack Legal Research, https://law.counselstack.com/opinion/prima-tek-ii-llc-v-polypap-sarl-cafc-2005.