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 designed to protect perishable products during shipping without refrigerant packs. Cellulose alleged direct and indirect patent infringement under 35 U.S.C. § 271 and false marking under 35 U.S.C. § 292.

SC Marketing filed a counterclaim under 35 U.S.C. § 256 seeking correction of inventorship. It alleged that Sal Cardinale, SC Marketing’s principal, contributed to the patented technology but was improperly left off the patent. The inventors listed on the patent were Kevin Chase, Brandon Fenske, Christopher Benner, and Matthew Henderson.

The Summary-Judgment Motions

Cellulose moved for summary judgment on SC Marketing’s fourth counterclaim. 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 Cellulose’s motion and argued that Cardinale made inventive contributions during the parties’ 2015 business relationship. The alleged contributions included attaching thermoplastic film to both sides of a thermoplastic fibrous core to form a laminate that could be folded without creases, shipping the insulation in compressed form so it could expand after unpacking, and making the product entirely from PET to support curbside recycling.

Court’s Analysis

Summary judgment is appropriate only when there is no genuine dispute about a fact that could affect the outcome and the moving party is entitled to judgment as a matter of law. At that stage, the court does not decide which witnesses are credible or weigh conflicting evidence. Instead, it views the evidence favorably to the party opposing the motion.

For inventorship, the court explained that conception is the key question. A joint inventor generally must contribute to conception of the claimed invention, but need not make the same amount or type of contribution as other inventors and need not contribute to every patent claim. An alleged omitted inventor must prove the contribution by clear and convincing evidence, and the person’s own testimony generally must be supported by other evidence.

The court found enough supporting evidence to create a trial-worthy factual dispute about Cardinale’s alleged contribution. The record included communications among Cardinale, SC Marketing’s supplier, and Cellulose concerning recyclable packaging, PET film, PET batts, two-sided lamination, thickness, density, and the ability to compress and expand the insulation. The court also considered evidence that Cellulose was testing PET film on both sides of a PET batt before or around June 18, 2015, as well as evidence concerning Cardinale’s discussions and instructions during the parties’ relationship.

The court recognized that Cellulose challenged SC Marketing’s evidence as largely based on testimony by interested witnesses and argued that the documentary record did not support Cardinale’s account. But the court concluded that the evidence, viewed as a whole, supported an inference of joint inventorship and left factual disputes requiring resolution at trial. The court therefore did not decide who was the inventor.

Disposition

The court denied Cellulose’s motion for summary judgment on the fourth counterclaim concerning correction of inventorship. The conclusion states that the court denied the cross-motions for summary judgment, resolving ECF Nos. 185 and 189.