Patentee Wins Partial Summary Judgment But Loses at Trial
Free-Flow Packaging (FPI) probably felt like it won a victory when Judge Gerald Bruce Lee granted it partial summary judgment in a the declaratory judgment action brought by Pregis Corporation. Pregis Corp. v. Doll, et al., 2010 U.S. Dist. LEXIS 25582 (E.D. Va. March 16, 2010).
Free-Flow’s victory, however, was short-lived. On March 18 -- after twenty-two days of trial and deliberations -- the jury returned a verdict in favor of Pregis on all four of the FPI patents in suit.
FPI and Pregis are direct competitors in the business of making and selling machines used to make air-filled packing cushions (like bubble wrap). Pregis sought a declaratory judgment that it did not infringe four FPI patents and that the patents were invalid.
In his summary judgment opinion, Judge Lee ruled:
- A previous settlement agreement between FPI and a predecessor to Pregis did not preclude FPI from asserting its patents against Pregis;
- FPI was not entitled to summary judgment of non-infringement because there were issues of fact as to whether the accused devices met every element of the claims;
- FPI was entitled to summary judgment on Pregis’ claim that FPI improperly introduced new matter in a post-filing amendment in violation of 35 USC §§ 112 and 132;
- FPI was entitled to summary judgment on Pregis’ claim that a related patent was not prior art to two of the patents in suit;
- FPI was entitled to summary judgment on Pregis’ claim of double patenting;
- FPI was entitled to summary judgment on Pregis’ assertion of intervening rights because none of the patents-in-suit were reissue patents.
FPI’s victory, however, proved illusory. The jury found that Pregis did not infringe 22 of the 23 asserted claims and that all the asserted claims of three of the four patents at issue, including the one infringed claim, were obvious. The verdict form can be found here.
Two other comments on this case:
- First, it is notable that Judge Lee allowed FPI to assert 23 claims at trial and that the case took more than four weeks to try – much longer than almost all civil cases in the Rocket Docket, including patent cases. Is the conventional wisdom that most cases in the EDVA can be tried in a couple of days and any case can be tried in less than two weeks changing?
- Second, Judge Lee, like some other judges in the Alexandria Division of the EDVA, did not conduct a claim construction proceeding early in the case but rather construed certain claims roughly eight weeks before trial and construed other claims in his summary judgment opinion.
