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ROBERG v. 20TH CENTURY PLASTICS

January 5, 1999

PAUL J. ROBERG, PLAINTIFF,
v.
20TH CENTURY PLASTICS, INC., DEFENDANT.



The opinion of the court was delivered by: Lechner, District Judge.

OPINION

This case concerns a dispute over a transparent, plastic protective holder for thin items.*fn1 Plaintiff, Paul J. Roberg ("Roberg"), brought suit against the defendant, 20th Century Plastics, Inc. ("20th Century") alleging patent infringement. See Complaint ¶ 1.

Currently pending are a motion for summary judgment filed by 20th Century (the "20th Century Motion for Summary Judgement") and a cross motion for summary judgement filed by Roberg (the "Roberg Motion for Summary Judgment").*fn2 20th Century seeks summary judgment of non-infringement either literally or pursuant to the doctrine of equivalents. See 20th Century Motion for Summary Judgment. Roberg seeks summary judgment of literal infringement. See Roberg Motion for Summary Judgment. For the reasons set forth below, both the 20th Century Motion for Summary Judgment and the Roberg Motion for Summary Judgment are denied.

FACTS

A. Parties

Roberg resides in Tenafly, New Jersey and is the sole owner of United States Patent 4, 958, 450 (the "`450 Patent"). See Complaint ¶¶ 2, 4. The `450 Patent was issued on 25 September 1990 and was entitled Protective Holder for Holding Thin or Substantially Thin Items. See id. ¶ 4.

20th Century is incorporated in California with its principal place of business in Brea, California. See Complaint ¶ 3. 20th Century produces and sells photo storage pages (the "Photo I.D. Pages") that are alleged to infringe the `450 Patent. See id. ¶ 5; Anglo Declaration ¶ 2.

B. Procedural History

Roberg commenced this action on 10 September 1997 by filing a complaint (the "Complaint") alleging patent infringement pursuant to 35 U.S.C. § 271. See Complaint ¶¶ 1, 5-6. The Complaint also seeks treble damages pursuant to 35 U.S.C. § 284, and an injunction barring 20th Century from infringing the `450 Patent. See Complaint pp. 2-3 ¶¶ A-G.

On 3 December 1997, 20th Century filed art answer' to the Complaint (the "Answer") and asserted a counterclaim against Roberg requesting a declaratory judgement of non-infringement and seeking attorneys' fees under 35 U.S.C. § 285. See Answer p. 4 ¶¶ 7-9.

On 24 December 1997, Roberg filed an answer to the Counterclaim of 20th Century ("Answer to Counterclaim"). See Answer to Counterclaim. Roberg denied allegations 20th Century does not produce or sell a product that infringes the `450 Patent. See id.

The central issue of both the 20th Century Motion for Summary Judgment and the Roberg Motion for Summary Judgment is the construction of claims one and two of the `450 Patent ("Claim One" and "Claim Two") and the comparison of the properly construed claims to the items produced by 20th Century that are accused of infringing. On 5 January 1998, proceedings were conducted concerning the filing of the motions for summary judgment. During the proceedings, both parties agreed that a Markman*fn3 hearing was not necessary to resolve the issues and that the issues could be resolved on the briefs. See Transcript of 5 January 1998 Proceedings ("Tr. 5 Jan. `98 Proceedings") at p. 3, 1. 11 to p. 4, 1. 3. The parties further agreed the motions for summary judgment' could be decided based solely upon the claims (the "Claims"), specification (the "Specification"), and file-wrapper history (the "Prosecution History"). See id. at p. 8, 11. 10-21.

Following completion of all briefing, a hearing was held on 21 December 1998 (the "21 December 1998 Hearing") concerning the 20th Century Motion for Summary Judgment and the Roberg Motion for Summary Judgment.

C. Background

The `450 Patent and the Photo I.D. Pages concern flexible holder sheets for holding thin items. See `450 Patent; Anglo Declaration ¶ 4 (describing construction of Photo I.D. Pages). Several flexible holder sheets are in the public use. See `450 Patent, "Background of Invention." Holder sheets, other than as contemplated by the `450 Patent, have several disadvantages—difficulty "in loading items, entrance of dust or moisture into the holding pocket, and easy dislodgement of items. See id. The `450 Patent was designed to eliminate the disadvantages of the prior art. See id.

1. The `450 Patent

a. The Patent

The Patent Application was filed on 20 September 1988 and was issued as a patent on 25 September 1990. See `450 Patent. The `450 Patent contains two independent claims. See id.

Claim One provides as follows:

  1. A holder for thin items comprising: a backing sheet
  having a length, and a width; a plurality of strips
  having a length, a width substantially equal to the
  width of said backing sheet, each of said strips
  having an upper edge and a lower edge, said strips
  being connected to said backing sheet along a
  longitudinal connection line running substantially
  parallel to each of said strip edges spaced from said
  lower edge a distance which is less than the distance
  said longitudinal connection line is spaced from said
  upper edge, and said strips each being connected to
  said backing sheet along a plurality of transverse
  connection lines running substantially transverse to
  said longitudinal connection line, each transverse
  connection line extending toward the upper edge of the
  corresponding strip from adjacent said longitudinal

  connection line of a corresponding strip and
  terminating at a location spaced from said upper edge
  of the corresponding strip, each of said plurality of
  strips being located along the length of said backing
  sheet, such that strips positioned between upper and
  lower adjacent strips have upper and tower overlapping
  portions, said upper overlapping portion being defined
  between the location of termination of said transverse
  connection lines and the upper edge of the
  corresponding strip, said lower overlapping portion
  being defined between the longitudinal connection of
  the corresponding strip and the lower edge of the
  corresponding strip, said lower overlapping portion
  being positionable to overlap said upper overlapping
  portion of an adjacent strip and said lower
  overlapping portion being positionable to underlap
  said upper overlapping portion of the adjacent strip.

Claim One (emphasis added).

Claim Two provides as follows:

  2. A holder for thin items comprising: a backing sheet
  having a length, and a width; a plurality of strips
  having a length, a width substantially equal to the
  width of said backing sheet, each of said strips
  having an upper edge and a lower edge, said strips
  being connected to said backing sheet along a
  longitudinal connection line running substantially
  parallel to each of said strip edges spaced from said
  lower edge a distance which is less than the distance
  said longitudinal connection line is spaced from said
  upper edge, and said strips each being connected to
  said backing sheet along a plurality of transverse
  connection lines running substantially transverse to
  said longitudinal connection line, each transverse
  connection line extending toward the upper edge of the
  corresponding strip from adjacent said longitudinal
  connection line of a corresponding strip and
  terminating at a location spaced from said upper edge
  of the corresponding strip, each of said plurality of
  strips being located along the length of said backing
  sheet, such that strips positioned between upper and
  lower adjacent strips have upper and lower overlapping
  portions, said upper overlapping portion being defined
  between the location of termination of said transverse
  connection lines and the upper edge of the
  corresponding strip, said lower overlapping portion
  being defined between the longitudinal connection of
  the corresponding strip and the lower edge of the
  corresponding strip, said plurality of strips
  including an uppermost strip connected to said backing
  sheet by a longitudinal connection time and having a
  lower overlapping portion extending from said
  longitudinal connection line to said bottom edge of
  the uppermost strip.

Claim Two (emphasis added).

b. The `450 Patent Prosecution History

As stated, the application for the `450 Patent (the "`450 Patent Application") was filed on 20 September 1988. See `450 Patent Prosecution History attached to Mentlik Certif. as Exh. D (the "Prosecution History") at 7. The `450 Patent Application acknowledged the existence of other flexible holder sheets. See Prosecution History at 10. The prior art, however, was alleged to "[have been] cumbersome to load, allow introduction of dust or moisture, and . . . allow inadvertent dislodgement of the contents." See id.

The invention Roberg sought to patent "provide[d] pockets with shallow side walls so that the material above the walls act[ed] as a flap and in cooperation with a like oppositely functioning flap from above [could] function advantageously as a loading guide, a dust and moisture guard, and a security flap." See id. at 10-11.

The initial `450 Patent Application was rejected. See Prosecution History at 32. The claims in the application failed to particularly point out and distinctly claim the subject matter of the invention. See id. at 33. In addition, the Patent Examiner found it would have been obvious, in light of the prior art, to. create strips with a plurality of pockets and closures that ran the whole length of a given row. See id. at 34.

Roberg submitted an amendment to the `450 Patent Application. See Prosecution History at 37. In support of the `450 Patent Application, Roberg stated:

  One feature of the present invention which is not
  shown in the [prior art] is that different rows of
  pockets may be sealed by an overlapping flap which is
  formed by a second sheet which is bonded on top of a
  first sheet in a manner to define the pockets and to
  provide the overlapping flap which extends to the
  pockets below the first row. In addition[,] the side
  forming portions of the pockets disclosed by applicant
  do not extend up to the top edge of the second and
  third sheets of the first and second row[s] of
  pockets. Applicant's arrangement makes it possible to
  have a second sheet overlie the third sheet to form a
  covering for the openings of the pockets which are
  situated below.

Id. at 41.

The amended application was rejected in part and objected to in part. See Prosecution History at 45. The rejected claims were rejected as being obvious in light of the prior art. See id. at 46-49. Specifically, the upper flap structure with overlapping portions was found to have been obvious to one of ordinary skill in the art. See id. at 46-47. The language detailing the "overlap portions" was also found to be ambiguous. See id. at 47.

Claim Three*fn4 of the `450 Patent Application was objected to as being dependent upon a rejected base claim. See Prosecution History at 48. The Patent Examiner stated this claim would be "allowable if rewritten to overcome the objection . . . and to include all of the limitations of the base claim and any intervening claims."*fn5 Id.

In response, Roberg submitted another amendment to the `450 Patent Application. See Prosecution History at 54. This amendment canceled all previous claims and added the claims that were accepted as Claim One "and Claim Two of the `450 Patent. See Prosecution History at 54-61.

2. The 20th Century Photo I.D. Pages

The Photo I.D. Pages are made and sold by 20th Century Plastics. See Anglo Declaration at ¶ 2. The Photo I.D. Pages have only two front strips.*fn6 See id. at ¶ 5. Roberg contends the Photo I.D. Pages infringe the `450 Patent. See Complaint ¶ 1.

The 20th Century Photo I.D. Pages have the following construction:

  a. A transparent-plastic (polypropylene) backing sheet
  forms the entire rear ...

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