IP Law Daily, PATENT—N.D. Cal.: Summary judgment on correction of inventorship counterclaim denied in food packaging dispute, (Sep 23, 2024)
Law Firms Mentioned:Dickinson Wright PLLC | Wilson Sonsini Goodrich & Rosati
Organizations Mentioned:Cellulose Material Solutions, LLC | Dickinson Wright, PLLC | SC Marketing Group, Inc. | Wilson Sonsini
By Kevin M. Finson
The question of inventorship was not suitable for resolution on summary judgment because email communications between the parties could corroborate the alleged inventor’s contributions.
A maker of food packaging was not entitled to summary judgment against a competitor’s claim for correction of inventorship, the U.S. District Court in San Francisco has held. Voluminous communications between the parties created a fact question as to whether the alleged co-inventor contributed to the invention (Cellulose Material Solutions, LLC v. SC Marketing Group, Inc., No. 3:22-cv-03141-LB (N.D. Cal. Sept. 20, 2024)).
Cellulose Material Solutions, LLC (Cellulose) was the owner of U.S. Patent No. 11,078,007 (the ’007 patent), which claimed packaging insulation that protected perishable goods such as food without the need for refrigerant packs. Cellulose brought suit for infringement against SC Marketing Group, Inc. (SC), a competitor in the food packaging insulation industry. SC counterclaimed for, among other things, correction of inventorship, claiming that its principal Sal Cardinale contributed to the technology and was wrongly omitted as an inventor. Cellulose moved for summary judgment on the correction of inventorship claim.
Inventorship. Cellulose argued that the evidence showed it was testing the product in question in the first half of 2015, before it had any communications with Sal Cardinale or SC. The court found that the evidence in the record showed at least a question of material fact as to whether the product being tested in the first half of 2015 actually possessed the disputed elements such as PET batts with PET films adhered to both sides. The court specifically described numerous email communications which could be read to corroborate Cardinale’s claim to have contributed to the invention.
The court denied the motion for summary judgment.
The Case is No. 3:22-cv-03141-LB.
Judge: Beeler, L.
Attorneys: Christopher Mitchell (Dickinson Wright PLLC) for Cellulose Material Solutions, LLC. Ryan Ronald Smith (Wilson Sonsini Goodrich & Rosati) for SC Marketing Group, Inc.
Companies: Cellulose Material Solutions, LLC; SC Marketing Group, Inc.
Cases: Patent CaliforniaNews