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Marking Requirement of 35 U.S.C. § 287(a) Does Not Apply When Only Method Claims Asserted

March 17, 2009

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Last Month at the Federal Circuit - April 2009

Judges: Bryson, Gajarsa, Moore (author)

[Appealed from: D. Del., Magistrate Judge Thynge]

In Crown Packaging Technology, Inc. v. Rexam Beverage Can Co., Nos. 08-1284, -1340 (Fed. Cir. Mar. 17, 2009), the Federal Circuit reversed and remanded the district court’s grant of SJ of noninfringement of Crown Packaging Technology, Incorporated’s (“Crown”) U.S. Patent No. 6,935,826 (“the ’826 patent”). The Federal Circuit also reversed the district court’s grant of SJ dismissing Rexam Beverage Can Company’s (“Rexam”) counterclaim for infringement of U.S. Patent No. 4,774,839 (“the ’839 patent”).

Crown and Rexam both sell beverage can ends and bodies to beverage fillers. The beverage fillers first fill the can bodies with the desired beverage and then seal the can ends to the can bodies. Crown’s “Superend” can end was the commercial embodiment of the ’826 patent. Crown contended that the Superend revolutionized the low-margin beverage can market by requiring less metal than a conventional can end. Rexam designed its own can end, the “Rexam End,” to compete with the Superend.

Crown filed suit against Rexam, alleging that the Rexam End infringed claim 14 of the ’826 patent under the DOE. In response, Rexam filed counterclaims alleging that Crown infringed the ’839 patent. The district court granted Crown’s motion for partial SJ under 35 U.S.C. § 287(a), dismissing one of Rexam’s counterclaims for failure to mark. The district court also granted Rexam’s SJ motion of noninfringement of claim 14 of the ’826 patent. Both parties appealed the district court’s decision.

On appeal, the Court first addressed whether it had jurisdiction to hear the appeals. The Court noted that the district court had issued an amended order granting Crown’s SJ motion to dismiss Rexam’s first counterclaim. Several months later, the district court issued a final judgment resolving the remaining claims and counterclaims, but the final judgment did not mention the earlier dismissal of Rexam’s first
counterclaim. Thus, the Court stated that it was obligated to consider whether the final judgment ended the litigation on the merits. The Court recognized that an earlier, nonappealable order may merge into a subsequent final judgment, and concluded that the district court clearly intended the final judgment to dispose of all the claims and counterclaims.

Turning to the merits, the Court first reviewed the district court’s grant of Rexam’s SJ motion of noninfringement under the DOE. Specifically, the Court analyzed the parties’ arguments regarding whether the “fold” in the Rexam End was equivalent to the “annular reinforcing bead” in claim 14 of the ’826 patent using the function-way-result test. Crown’s expert opined that the function of the annular reinforcing bead in the ’826 patent was to increase the pressure resistance of a sealed-on can end and that the function of the Rexam End fold was identical. After analyzing the way and result prongs of the test, Crown’s expert concluded that the Rexam End is not substantially different from its corresponding elements in the ’826 patent.

In his report, Rexam’s expert conceded that a function of the annular reinforcing bead is to increase pressure resistance. Rexam’s expert argued, however, that there was no infringement based on his analysis of the way prong of the test. Nevertheless, in its brief for SJ, Rexam suggested that the annular reinforcing bead performed two additional functions. First, it argued that the annular reinforcing bead functioned to support the central panel of the can. Second, it argued that the annular reinforcing bead provided an opening into which a portion of the sealing machine could enter during the filling and sealing process. Crown addressed these arguments in its opposition brief by simply stating that the declaration of its expert confirmed that there was a genuine issue of material fact as to infringement under the DOE. While Crown asserted that its expert’s report precluded SJ, it did not provide a detailed argument for this statement or present any additional evidence. Based on Rexam’s argument regarding the two additional functions, together with Crown’s failure to counter this evidence, the district court concluded there was no genuine issue of material fact and granted SJ of noninfringement.

The Court noted that Rexam offered only attorney argument to support the two additional functions, not actual evidence. Second, the Court interpreted Crown’s response, which pointed to its expert report, as sufficient to create a material issue of fact. The Court distinguished this from a case where Crown failed to respond to an argument or failed to respond with any evidence, noting that Crown’s expert reviewed the claim in light of the specification and determined that there was only one function. The Court concluded that while Crown could have made this clearer by specifically addressing the issue or restating its expert’s analysis, its failure to refer to evidence already before the district court should not be fatal. Since Crown had provided evidence to support its position, and since any reasonable factual inference must be resolved in favor of the nonmoving party, the Court reversed the grant of SJ and remanded.

Turning to Rexam’s cross-appeal, the Court considered the district court’s grant of SJ dismissing Rexam’s counterclaim for infringement of the ’839 patent for failure to mark the machines that perform the patented method. The ’839 patent contains both apparatus and method claims. The Court stated that “[t]he law is clear that the notice provisions of § 287 do not apply where the patent is directed to a process or method.” Slip op. at 12. The Court concluded that this case was factually identical to Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 1075 (Fed. Cir. 1983), which held that 35 U.S.C. § 287(a) did not apply where a patentee only asserted the method claims of a patent that included both method and apparatus claims. Thus, since Rexam only asserted the method claims, § 287 did not apply, and the Court reversed the district court’s grant of SJ dismissing Rexam’s counterclaim for infringement of the ’839 patent.