Indiana Intellectual Property Law News
Indianapolis, Indiana – Attorneys for Plaintiff, Closure Systems International, Inc. (“CSI”) of Indianapolis, Indiana, filed suit in the Southern District of Indiana seeking a correction in inventorship for two U.S. Design Patents issued to Defendant, Novembal USA Inc. (“Novembal”) of Edison, New Jersey. The patents at issue in this case are United States Patent Nos. D836,442 (the “‘442 Patent”) and 
D838,171 (the “‘171 Patent”) (collectively the “Patents in Suit”). CSI is seeking preliminary and/or permanent injunctions, attorneys’ fees, costs, and any other relief the Court deems proper.
CSI claims three of its employees, Arnold Benecke, Bill Moll, and John Edie, developed a closure for a bottle (the “Option 2 Closure”) for its customer, Nestle Waters (“Nestle”) on or about January 27, 2011. This invention was allegedly assigned to CSI pursuant to assignments from the three inventors. According to the Complaint, on March 9, 2011, CSI sent a presentation concerning the Option 2 Closure and another option to Nestle that stated that it would have “Prototypes molded by April 1” and “Small quantity of slit samples will be sent by April 13”. CSI claims it emailed Nestle a drawing of the Option 2 Closure on March 10, 2011.
CSI claims Nestle trialed different closures from CSI and at least two other competitors, including Novembal, and CSI delivered 100 samples of the Option 2 Closure to Nestle in or about June 2011. CSI alleges each of the manufacturers at the Nestle trials witnessed each closure and saw all the samples provided to Nestle. After the trials, Nestle awarded the business to Novembal, not CSI.
According to the Complaint, Nestle asked CSI to replace Novembal and inquired as to its ability to supply the Option 2 Closure in early 2018. CSI claims it began supplying a similar closure to the Option 2 Closure to Nestle, but it was slightly different (the “New Closure”). On or about May 24, 2019, CSI claims it was informed by Nestle that the New Closure infringed one or more Novembal patents. Just six days later, Novembal allegedly sent a cease and desist letter to CSI stating that the New Closure infringed the ‘442 Patent.
The ‘442 Patent was allegedly filed by Novembal on August 17, 2018, with the parent application being filed on January 4, 2018. CSI claims those dates line up to when Nestle would have had the New Closure in its possession to begin trialing it with the intent to replace the Novembal closures. According to the Complaint, CSI informed Novembal of its alleged issue with inventorship of the ‘442 Patent on July 11, 2019 and gave Novembal evidence that CSI had disclosed the Option 2 Closure to Nestle in 2011. Novembal allegedly disputed CSI’s disclosure as prior art and “Novembal’s investigation confirmed that Novembal began developing its cap design before 2011.” Despite CSI requesting evidence as to Novembal’s conception of its closure, Novembal allegedly denied CSI that information until August 29, 2019 when it provided a drawing dated 2010 that purported to show the conception of Novembal’s closure. CSI claims this drawing provided by Novembal is “not even close to the patented design” and “depicts a cross section of a completely different cap”.
Pursuant to 35 U.S.C. § 256(a) and (b), CSI is requesting the Court correct inventorship for both of the Patents in Suit. CSI is also requesting a constructive trust be imposed on Novembal’s interests and benefits in the Patents in Suit for the benefit of CSI as it believes the “Patents in Suit were procured through actual or constructive fraud with intent to deceive and defraud at least the public, Nestle, CSI and/or the U.S. Patent and Trademark Office.” Finally, CSI is seeking attorneys’ fees and costs pursuant to 35 U.S.C. § 285.
The case was assigned to Chief Judge Jane E. Magnus-Stinson and Magistrate Judge Mark J. Dinsmore in the Southern District and assigned Case 1:19-cv-03944-JMS-MJD.