The C.W. Zumbiel Company, Inc. v. David J. Kappos et al.

Docket No. 2011-1332, -1333 (Reexamination No. 95/000,077)

December 27, 2012

Brief summary: Certain claims of patent directed to cartons and boxes for holding containers (e.g., beverage cans) found obvious as predictable variations of or disclosed by (e.g., functional language) the prior art and limited by the preamble.

Summary: Zumbiel challenged Graphic Packaging International’s U.S. Pat. No. 6,715,639 directed to cartons and boxes for holding containers (e.g., “[a]n enclosed carton for carrying a plurality of containers in two rows”) by inter parties reexamination. The dispute focused on two claimed features: “a tear line extending across the top panel, side panels, and exiting end” (e.g., claim 7: “a single tear line…formed across the side end flaps, top and two sides of the carton”) and “a finger flap…for pulling the dispenser open along the tear line” (e.g., claim 2: “finger flap is located between the first and second containers in the top row”. The FC panel affirmed the BPAI decision that certain claims were obvious (e.g., claim 7) and others not (e.g., claim 2). Three prior art patents were considered. Exemplary conclusions include: “the finger opening…would be a predictable variation that enhances user convenience, as evidenced by [the prior art], and is within the skill of a person of ordinary skill in the art” (e.g., KSR); “that the prior art [meets the] functional language” (citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (acknowledging how prior art may perform and thereby meet claimed functional language)); and, “[h]ere, ‘containers’ as recited in the claim body depend on ‘a plurality of containers’ in the preamble as an antecedent basis” citing August Tech. (FC 2011) (“A claim’s preamble may limit the claim when the claim drafter uses the preamble to define the subject matter of the claim.”), Allen Eng’g Corp. (FC 2002) (the preamble is limiting “when it is ‘necessary to give life, meaning and vitality’ to the claim”), and Catalina Marketing (FC 2002) (“the preamble constitutes a limitation when the claim(s) depend on it for antecedent basis, or when it “is essential to understand limitations or terms in the claim body”). In the dissent, Circuit Judge Prost argued that “the Board failed to apply KSR to the facts of this case” (“common sense application of the obviousness doctrine should filter out low quality patents such as this one”) and “that somebody else beat the patentee to his idea by almost fifty years.”

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