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PRIMA TEK II, L.L.C. v. POLYPAP SARL

April 30, 2004.

PRIMA TEK II, L.L.C. and SOUTHPAC TRUST INT'L, as Trustee for the Family Trust U/T/A dated 12/8/95, Plaintiffs
v.
POLYPAP SARL, a French Corporation, PHILIPPE CHARRIN, and ANDRE CHARRIN, Defendants



The opinion of the court was delivered by: MICHAEL J. REAGAN, District Judge

MEMORANDUM AND ORDER

I. CASE HISTORY AND SUMMARY

On March 29, 1999, Plaintiffs, Prima Tek II, L.L.C. ("Prima Tek") and Southpac Trust International, Inc., as Trustee for the Family Trust under a trust agreement dated December 8, 1995 ("Southpac"), filed a two-count complaint under 35 U.S.C. § 271 against Defendants, Polypap, S.A.R.L., a Society of the Republic of France ("Polypap"), Philippe Charrin, and Andre Charrin, alleging they infringed upon two patents owned by Plaintiffs involving decorative assemblies for holding and supporting a floral grouping without the need for a pot by producing, manufacturing, and selling a product called the "Bouquett'O." The Bouquett'O is a thin, semicircular piece of stiff plastic which, when shaped into a cone, receives the stems of flowers through an open hole on top. The Bouquett'O then is placed upon a waterproof, usually decorative floral wrapping which is gathered around the upper neck of the Bouquett'O and tied. This allows flowers to be freestanding without a vase or pot and without being placed into a medium such as potting soil or floral foam. Water is added to the same opening where the floral stems were inserted, providing nourishment and stability to the floral grouping. The Bouquett'O comes in five sizes and is inexpensive to ship, because it lies flat until folded into a conical shape. It is inexpensive to use, because it requires no vase or pot and the entire finished product — Bouquett'O, flowers and all — is disposable.

  Plaintiffs claim Defendants have infringed upon United States Patent No. 5,410,856 regarding a decorative assembly for a floral grouping ("the `856 patent") and United States Patent No. 5,615,532 regarding the method of making a decorative assembly for floral grouping ("the `532 patent") in several ways. In summary, Plaintiffs claim that Polypap has directly infringed upon one or more claims of the `856 and `532 patents by making and using the Bouquett'O. Second, Plaintiffs claim that Polypap has induced infringement of the patents by instructing third party customers on how to construct and use the Bouquett'O. Next, Plaintiffs claim that Polypap engaged in contributory infringement of the patents by selling and offering the Bouquett'O for sale. Last, Plaintiffs allege that the inventors of the Bouquett'O, Andre Charrin (the owner of Polypap) and Philippe Charrin (the President, CEO, and Chairman of the Board of Polypap), also have committed contributory infringement by exercising day-to-day control of Polypap's activities. See Plaintiffs' Amended Complaint.

  Plaintiffs allege all such infringement has caused irreparable harm. Plaintiffs seek preliminary and permanent injunctions prohibiting Defendants from making, using, or selling the Bouquett'O or instructing others in its use. Plaintiffs do not seek monetary damages for any alleged infringement.

 
II. PROCEDURAL HISTORY & CURRENT STATUS
  In 2001, this Court issued a Markman Order construing disputed claim terms, applied the terms as it had construed them, and granted Defendants' motion for summary judgment. Plaintiffs appealed. After hearing the case, the Federal Circuit vacated this Court's Order and remanded the case for further proceedings. See Prima Tek II, L.L.C. v. Polypap S.A.R.L., 318 F.3d 1143 (Fed. Cir. 2003). In July and October 2003, the parties tried the case before the bench. Below are the Court's findings of fact and conclusions of law.
 
III. FINDINGS OF FACT AND CONCLUSIONS OF LAW
  Plaintiffs' first claim alleges that Polypap has directly infringed upon one or more claims of the `856 and `532 patents by making and using Plaintiffs' product, the Bouquett'O. Infringement analysis requires two steps. Prima Tek II, L.L.C. at 1148. The first step is to determine the meaning and scope of the patent claims asserted to be infringed. Id. The second step is to compare the properly construed claims to the device accused of infringing. Id. The first step — claim construction — is a question of law, while the second step — infringement — is a question of fact. Id. The instant case was a bench trial, so both steps are Court determinations.

  A. Claim Construction

  On appeal, the Federal Circuit found that this Court's definition of the claim term "floral holding material" was incorrect and instructed that the term should be given its ordinary meaning. The Federal Circuit also held that this Court's limitation of "floral holding material" to floral foam or soil and its requirement that the stem ends be inserted into the floral holding material were also erroneous. As such, the definitions of the disputed claim terms used by this Court, as altered by the Federal Circuit's instructions, are as follows:
U.S. Patent No. 5,615,532 Construction Method of Making a Decorative Assembly for a Floral Grouping A. Floral holding material Has an upper end, a lower end and an outer (Claims 9-11, 13-15) peripheral surface and is constructed of a material capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means
B. Material capable of receiving a portion of Is any material that can function as floral holding the floral grouping and supporting the floral material which supports the floral grouping grouping without any pot means without a closed bottom receptacle such as a (Claims 9-11, 13-15) flower pot, vase, etc.
C. Disposing the stem in the floral holding Means the "floral holding material" receives a material portion of the floral grouping (Claims 9-11; 13-15)
U.S. Patent No. 5,410,856 Construction Decorative Assembly for a Floral Grouping
D. Floral holding material Has an upper end, a lower end and an outer (Claims 1-5; 7-11; 15-16; 19-24; 29-30; 33- peripheral surface and is constructed of a material 36; 39; 43-45; 48) capable of receiving a portion of the floral grouping and supporting the floral grouping without any pot means
E. Material capable of receiving a portion of the Is any material that can function as floral holding floral grouping and supporting the floral material which supports the floral grouping without grouping without any pot means a closed bottom receptacle such as a flower pot, (Claims 1-5; 7-11; 15-16; 19-24; 29-30; 33- vase, etc. 36;39; 43-45; 48)
F. Stem ends disposed in floral holding material Means the "floral holding material" receives a (Claims 15-16; 19-24) portion of the floral grouping
G. Disposing the stem in the floral holding Means the "floral holding material" receives a material portion of the floral grouping (Claims 29-30; 33-36; 39; 43-45; 48)
H. Overlapping fold is substantially bonded Means the overlapping folds that are formed in the (Claims 1-5; 7-11; 15-16; 19-24; 29-30; 33- sheet of material when it is gathered or crimped 36; 39; 43-45) about the upper end of the floral holding material is held in place with a band or bonding material
B. Infringement
  Having properly construed the claim terms (see above), the Court must compare those terms with the allegedly infringing device and determine whether the accused device is within the scope of the properly construed claim terms. PrimaTek II, 318 F.3d at 1153; Dolly, Inc. v. Spalding & Evenflo Cos., Inc., 16 F.3d 394, 397 (Fed. Cir. 1994). To show infringement, a plaintiff must establish that the accused device includes every limitation of the claim or an equivalent of each limitation. Id.

  In the case at bar, Plaintiffs assert two claims against Polypap — one from each of the two patents in suit: claim 15 of the `856 patent and claim 9 of the `532 patent. Using the above analysis, Plaintiffs must therefore establish that the Bouquett'O and its method of assembly include every limitation of the patent claims at issue in order to show infringement upon the patents.

 
I. Comparison of the Asserted Claims to the Accused Product and Method
a. Claim 15 of the `856 Patent
Claim 15 of the `856 patent reads as follows:
A decorative assembly comprising:
a floral grouping having a bloom end and a stem end;
a 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, the stem end of the floral grouping being disposed in the floral holding material and the floral holding material supporting the floral grouping with a portion of the floral grouping near the bloom end thereof extending a distance upwardly beyond the upper end of the floral holding material;
a sheet of material having an upper surface, a lower surface and an outer periphery, the upper surface of the sheet of material being disposed adjacent a portion of the outer peripheral surface of the floral holding material and the sheet of material extending about a portion of the outer peripheral surface of the floral holding material, the sheet of material extending about the outer peripheral surface of the floral holding material and leaving uncovered a portion of the floral holding material near the upper end thereof uncovered whereby the floral grouping extends upwardly beyond the upper end of the floral holding material and above the sheet of material; and
means for forming a crimped portion in the sheet of material with the crimped portion cooperating to hold the sheet of material in the position extended about the floral holding material to provide a decorative covering, the crimped portion being formed in the sheet of material near the upper end of the floral holding material wherein the means for forming a crimped portion is used to form at least one overlapping fold in the sheet of material, which overlapping fold is substantially bonded via the means for forming the crimped portion and the crimped portion engaging a portion of the floral holding material for cooperating to hold the sheet of material in the position extended about the floral holding material to provide a decorative covering.
  Comparing the individual elements of claim 15 to the finished product constructed using the Bouquett'O, such as those shown in trial exhibits including Polypap's internet website (Plaintiffs' Exhibit 7B), advertisements (Defendants' Exhibit 4), and promotional videotape (Plaintiffs' Exhibit 8), the Court finds as follows:

  1. The first element of claim 15 of the `856 patent requires: "a decorative assembly comprising: a floral grouping having a bloom end and a stem end. . . ." The Court finds that the requirements of this element have been met. When used for its sole intended purpose, the finished product created using a Bouquett'O is part of an overall decorative assembly which contains a floral grouping having a bloom end and a stem end. This fact was confirmed by numerous exhibits, as well as Defendants' expert witness, Richard Haslam.

  2. The next element of claim 15 requires: "a 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 . . ." The Court finds that the requirements of this element also have been met. First, Defendants' expert, Richard Haslam, specifically testified to these facts — that the Bouquett'O is a device which has an upper end, a lower end and an outer peripheral surface. He also testified that the Bouquett'O is constructed of plastic, a material which renders the cone capable of receiving and supporting the floral grouping without any pot means. Furthermore, the evidence at trial has shown no legitimate dispute regarding the real use to which the Bouquett'O is put. In its flattened state, the Bouquett'O has no function. Once fashioned into a cone, however, its function becomes apparent. In its conical shape, the Bouquett'O is a three-dimensional device. It has an upper end, a lower end, and an outer peripheral surface. It is constructed of plastic, a material which provides sufficient structure to the device so as to allow it to receive and support a floral grouping without any additional pot means. Accordingly, the Court finds that the Bouquett'O falls squarely within the definition of "floral holding material," as it has been construed by this Court.

  3. The next element of claim 15 states: "the stem end of the floral grouping being disposed in the floral holding material and the floral holding material supporting the floral grouping with a portion of the floral grouping near the bloom end thereof extending a distance upwardly beyond the upper end of the floral holding material. . . ." The Court finds that the requirements of this element have been met. All evidence demonstrates that the stem ends of the floral grouping are disposed in the finished decorative floral assembly constructed from the Bouquett'O, that the Bouquett'O supports the floral grouping, and that a portion of the floral grouping near the bloom end extends upwardly beyond the upper end of the cone fashioned from the Bouquett'O.

  4. The next element of claim 15 requires: "a sheet of material having an upper surface, a lower surface and an outer periphery . . ." The Court finds that the requirements of this element have been met. The finished decorative floral assembly constructed from the Bouquett'O uses a sheet of material which is wrapped up and around the plastic cone. There is no question that the sheet has an upper surface, a lower surface, and an outer periphery. 5. The next element of claim 15 states: "the upper surface of the sheet of material being disposed adjacent a portion of the outer peripheral surface of the floral holding material and the sheet of material extending about a portion of the outer peripheral surface of the floral holding material . . ." The Court finds that the requirements of this element have been met. In the decorative floral assembly constructed using the Bouquett'O, the upper surface of the sheet of material is placed near a portion of the outer peripheral surface of the cone, and the sheet of material extends around the outside of the cone.

  6. The next element of claim 15 states: "the sheet of material extending about the outer peripheral surface of the floral holding material and leaving uncovered a portion of the floral holding material near the upper end thereof uncovered whereby the floral grouping extends upwardly beyond the upper end of the floral holding material and above the sheet of material. . . ." The Court finds that the requirements of this element have been met.

  In the finished decorative floral assembly constructed from the Bouquett'O, the sheet of material extends around the cone, and a portion of the cone is uncovered at its apex. The Court rejects Defendants' contention that no portion of the cone remains uncovered. The Court notes testimony from Andre Charrin in which he admitted that water is poured into the completed assembly through an opening formed at the apex of the cone, as well as testimony from defense expert Haslam who testified that the bloom ends of the floral grouping are not covered by the sheet of material and that water may be poured into the cone through the opening formed at the apex of the cone. The Court further finds that the floral grouping extends upwardly through the apex of the cone and above both the cone and the sheet of material.

  7. The next element of claim 15 requires: a "means for forming a crimped portion in the sheet of material with the crimped portion cooperating to hold the sheet of material in the position extended about the floral holding material to provide a decorative covering. . . ." The Court finds that the requirements of this element have been met. When the sheet of material is gathered up and around the cone fashioned from the Bouquett'O and a band is placed around the sheet, a crimped portion is created in the sheet of material which assists in holding the sheet of material in position around the cone to provide a decorative covering.

  8. The final element of claim 15 states: "the crimped portion being formed in the sheet of material near the upper end of the floral holding material wherein the means for forming the crimped portion is used to form at least one overlapping fold in the sheet of material, which overlapping fold is substantially bonded via the means for forming the crimped portion and the crimped portion engaging a portion of the floral holding material for cooperating to hold the sheet of material in the position extended about the floral holding material to provide a decorative covering." The Court finds that the requirements of this element have been met. The crimped portion formed when the sheet of material is gathered about the outside of the cone fashioned from the Bouquett'O is located near the upper end of the cone. When the material is gathered to form the crimped portion, at least one overlapping fold is created in the sheet of material. To "substantially bond" the fold as defined by the Court above, the fold must be secured using a band or bonding material. Although the Court heard no evidence that Polypap has used or teaches the uses of an adhesive bond, the evidence demonstrated that Polypap consistently uses and instructs the use of a band or a ribbon tied at the apex of the cone to hold the sheet of material in place. As such, the crimped portion of the material touches a portion of the cone and assists in holding the sheet of material in position around the cone to provide a decorative covering.

  b. Claim 9 of the `532 Patent

  Claim 9 of the `532 patent reads as follows: A method for providing a decorative covering comprising:
providing a floral grouping having a bloom end and a stem end;
providing a 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;
providing a sheet of material having an upper surface, a lower surface and an outer periphery;
disposing the stem end of the floral grouping in the floral holding material;
disposing the upper surface of the sheet of material near the outer peripheral surface of the floral holding material and extending the sheet of material about at least a portion of the outer peripheral surface of the floral holding material while leaving at least a portion of the upper end of the floral holding material uncovered, the upper surface of the sheet of material being disposed adjacent the outer peripheral surface of the floral holding material; and
disposing banding means about the sheet of material in a position circumferentially about the floral holding material causing the banding means to press a portion of the sheet of material against the outer surface of the floral holding material for cooperating to hold the sheet of material in the position extended about the floral holding material to provide the decorative covering.
  Comparing the individual elements of claim 9 to the methods both taught and used by Defendants to construct a decorative assembly using the Bouquett'O, the Court finds as follows:

  1. The first element of claim 9 of the `532 patent states: "providing a floral grouping having a bloom end and a stem end . . ." The Court finds that the requirements of this element have been met. In its sales literature (Defendants' Exhibit 4), advertisements (Plaintiffs' Exhibit 20) and promotional videotape (Plaintiffs' Exhibit 8), and in the numerous demonstrations of the use of the Bouquett'O conducted and described at trial, Polypap provides detailed instructions on how to create a decorative floral assembly using a floral grouping having a bloom end and a stem end by using the Bouquett'O.

  2. The next element of claim 9 states: "providing a 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. . . ." The Court finds that the requirements of this element have been met. As previously found by this Court, the Bouquett'O, when ...


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