Cellulose Material Solutions, LLC v. SC Marketing Group, Inc.

Background

Cellulose sued SC Marketing Group, Inc., which does business as Thermal Shipping Solutions, over U.S. Patent No. 11,078,007. The patent covers packaging insulation for perishable products. The described insulation uses a thermoplastic-fiber core, or batt, with thermoplastic film attached to both sides. It can be compressed and shipped flat, then expand and be folded into a shipping container. Cellulose asserted direct and indirect patent infringement and false marking.

SC Marketing counterclaimed, among other things, for correction of inventorship under 35 U.S.C. § 256. It alleged that its principal, Sal Cardinale, contributed to the patented technology but was omitted from the list of inventors. The patent identifies Kevin Chase, Brandon Fenske, Christopher Benner, and Matthew Henderson as inventors.

The Motions

Cellulose moved for summary judgment on counterclaim four. Summary judgment is a decision without a trial when the evidence shows that no genuine dispute about an important fact exists and the moving party is entitled to judgment as a matter of law. Cellulose argued that Cardinale’s alleged inventive acts occurred in July 2015, after Cellulose had conceived the product covered by the patent.

SC Marketing opposed the motion and filed a cross-motion for summary judgment. It contended that Cardinale contributed to several features, including:

- attaching thermoplastic film to both sides of a thermoplastic batt; - creating a laminate that could be folded without creases, grooves, or cut lines; - developing insulation that could be compressed for shipping and then expand; and - making the product entirely from PET to allow curbside recycling.

Evidence and Analysis

The court explained that inventorship is a legal question based on underlying factual questions. A person claiming to be an omitted joint inventor must prove by clear and convincing evidence that the person contributed to the conception of at least one patent claim. The person’s own testimony alone is not enough; it must be supported by other evidence, such as documents, circumstantial evidence, or testimony from another person. The court considers all the evidence together rather than requiring one piece of evidence to prove the entire contribution.

The record contained competing evidence about when the relevant ideas arose and who contributed them. Cellulose presented evidence that it was testing PET batt material with PET film attached to both sides by June 18, 2015, and that it sent SC Marketing an email about a PET insulation solution on June 19, 2015. SC Marketing presented evidence that Cardinale had discussed recyclable PET packaging with a supplier before June 2015, had envisioned PET film on both sides of a PET batt, and later worked with Cellulose on thickness, density, and the manufacturing process.

The court said that communications between the parties provided corroboration for Cardinale’s claim of inventorship and supported an inference of joint inventorship. It also noted disputes involving the timing of the parties’ communications, Cellulose’s ability to produce double-sided laminated samples, and the contributions of the named inventors. The court therefore found a triable issue of disputed fact about whether Cardinale contributed to the patent claims.

Ruling

The court denied Cellulose’s motion for summary judgment on counterclaim four. The conclusion states that the court denied the parties’ cross-motions for summary judgment, resolving ECF Nos. 185 and 189. The order did not decide who ultimately is the correct inventor; it left the disputed inventorship issue for further proceedings.