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Crowded Prior Art Inherently Anticipates Patent for Products and Methods for Displaying Floral Groupings

June 22, 2005

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Last Month at the Federal Circuit - July 2005

Judges: Dyk (author), Gajarsa, and Plager

In Prima Tek II, L.L.C. v. Polypap, No. 04-1411 (Fed. Cir. June 22, 2005), the Federal Circuit reversed a district court’s holding of infringement and an injunction against further infringement, because the two patents under consideration were invalid as anticipated.

Prima Tek II, L.L.C. and others (collectively “Prima Tek II”) asserted U.S. Patent Nos. 5,410,856 (“the ‘856 patent”) and 5,615,532 (“the ‘532 patent”) against Polypap and others (collectively “Polypap”). The companies compete in the floral-products market. The accused product is a semicircular piece of plastic that can be formed into a disposable device for holding floral arrangements.

In a previous decision, the Federal Circuit had clarified certain claim constructions for the two patents and remanded the case for further proceedings inaccordance with the claim constructions. After a bench trial, the district court held the asserted claims to be not invalid and infringed.

On this appeal, the Federal Circuit observed that extensive prior art exists regarding products and methods for displaying floral groupings. The Court went so far as to comment that it appeared likely that the asserted claims were anticipated by an 1899 reference, but, for simplicity, it would address only a more recent reference (“Charrin”). In its previous decision, the Federal Circuit had construed the term “floral holding material” to have its ordinary meaning and to not be limited to just floral foam or soil. The Court did not include in that construction a requirement that the material be capable of holding its predetermined shape, and, according to the Federal Circuit, the district court had erred in adding such a limitation on remand.

The district court had found that the Charrin reference did not include certain crimping and overlaying-fold limitations recited in claim 15 of the ‘856 patent. Polypap argued that this teaching was inherent. The Federal Circuit agreed, pointing to the drawings and testimony from Phillipe Charrin himself.

Although there was no expert testimony on point, according to the Federal Circuit, none was required because the technology was easily understood without expert testimony, and Prima Tek presented no rebuttal evidence. Accordingly, the Court found the claim invalid as being inherently anticipated.