IP Law Daily, PATENT—N.D. Ill.: Summary judgment granted in part in sharps container dispute, (Oct 1, 2025)

By Kevin M. Finson, J.D.

There was no genuine dispute of material fact that an accused product infringed a patent covering sharps containers which prevented a person from putting their hand through the opening because the manufacturer presented photographs of 13 people reaching their hands into the container.

A seller of medical sharps containers was entitled to summary judgment on direct infringement claims in part, the U.S. District Court in Chicago has held. The asserted patent required that the container prevent access by a hand, and many photographs of people reaching their hands into the accused product were in the record (Catilina Nominees Proprietary Ltd. v. Stericycle, Inc., No. 1:15-cv-10734 (N.D. Ill. Sept. 28, 2025)).

Catalina Nominees Proprietary, Ltd. and Daniels Sharpsmart, Inc. (collectively, Sharpsmart) were the owner and exclusive licensee, respectively, of U.S. Patent No. 6,250,465 (the ’465 patent), which claimed a container for safely disposing of medical sharps waste which prevented hand access into the container. Sharpsmart brought suit for infringement against Stericycle, Inc. (Stericycle), a competitor in the sharps container market, for infringement of the ’465 patent and false advertising under the Lanham Act. Stericycle counterclaimed for a declaratory judgment of invalidity and noninfringement and that it had not committed acts of false advertising or unfair competition. Stericycle moved for summary judgment of noninfringement.

Literal infringement. After clarifying that its claim construction would require preventing access of a person’s hand into the storage area for sharps, but that this area may be beyond the marked “fill” line on the container, the court found that no reasonable jury could find the commercialized version of Stericycle’s product infringed, largely based on photographs of some 13 adults placing their hands through the opening of the container and past the fill line. However, a different version of the lid, used on what was described as the “testing and sample” design, more readily prevented access and the court found that as to that design there was a genuine question of material fact about whether the design actually infringed.

Doctrine of equivalents. Sharpsmart alleged infringement under the doctrine of equivalents, but did not provide particularized testimony from a person skilled in the art addressing equivalence under either an insubstantial differences test or the function, way, result test, so summary judgment was appropriate as to that theory.

Products shipped to foreign countries. Stericyle argued that it could not be liable for products manufactured by a third party and shipped to foreign countries, not sold in the United States, but the court found that Stericycle could still be liable for the manufacturing of infringing products within the United States by a third party at its direction, so summary judgment was not appropriate.

Patent marking. Finally, Stericycle argued that it was entitled to summary judgment against any damage prior to the filing of the suit because it did not have actual notice of the infringement prior to that date and Sharpsmart had not produced evidence that it complied with the marking statute. The court found that, drawing all inferences in favor of the non-moving party and based on interrogatory responses and photographs, there was at least a genuine issue of material fact as to whether Sharpsmart’s products were marked with the ’465 patent at the relevant time.

The court granted summary judgment of noninfringement as to the commercialized design of Stericycle’s product under both literal and doctrine of equivalents theories, and as to the testing and sample design under the doctrine of equivalents theory only. Summary judgment was denied on the issue of liability for products shipped to foreign countries and the issue of damages prior to the filing date of the lawsuit due to the dispute about Sharpsmart’s alleged failure to mark its products with the’465 patent.

The Case is No. 1:15-cv-10734.

Judge: Wood, A.

Attorneys: Christopher Paul Hotaling (Nixon Peabody LLP) for Catilina Nominees Proprietary Ltd. and Daniels Sharpsmart, Inc. Dana M. Herberholz (Dorsey & Whitney LLP) for Stericycle, Inc.

Companies: Catilina Nominees Proprietary Ltd.; Daniels Sharpsmart, Inc.; Stericycle, Inc.

Cases: Patent IllinoisNews